What is a Notice of Opposition to your trademark application?
When your trademark application is approved by the USPTO, it will be published for opposition. During that time period, a third party might oppose the registration of your trademark by filing a notice of opposition with the Trademark Trial and Appeal Board (TTAB). The opposition notice sets forth their grounds for blocking the registration of your mark. So how should you respond to a Notice of Opposition to your trademark application?
Calendar Your Time to Answer Deadline
Before doing anything else, briefly review the deadlines in the Trial Schedule. You will have roughly 40 days to answer. Make sure to mark the Time to Answer deadline on whatever digital calendar you prefer. Put this due date on your smartphone calendar, and perhaps on a physical calendar. If you use Outlook, enter a task with a deadline. Make it difficult for yourself to blow past this deadline.
Read the Notice of Opposition
Reading a legal document such as a trademark notice of opposition might seem daunting. However, a quick glance at the allegations can help reveal the grounds the opposer has for blocking your trademark application. Are they alleging likelihood of confusion with their trademarks? Do their allegations include any statements about your failure to do certain things?
At a minimum, reading the document may lead to questions that you’ll want to pose to prospective lawyers.
Talk to A Few TTAB Trademark Opposition Lawyers
Contact at least a couple of different trademark attorneys to explore the possibility of working together. Out of fairness, don’t expect a trademark lawyer to give you a whole strategy of defense for free. However, you might ask certain general questions to get a feel for their overall approach.
Here are some suggested questions to ask on how a trademark lawyer might respond to a notice of opposition.
- Are flat fees available for certain trademark opposition tasks?
- How does the attorney explore early settlement options?
- Will potential counterclaims be considered?
- Which motions and defenses are typically a waste of time and money?
- What circumstances would warrant an extension or suspension of the opposition proceeding?
- What are realistic cost estimates for the results you wish to achieve?
- Can they send you a list of their TTAB trademark cases?
Aim for An Early Settlement
Sometimes, the other side wants something from you. Perhaps, it’s a consent agreement. Maybe they want certain limitations on your use or future registrations of similar marks. Be open to compromise. Obtaining your trademark registration sooner while saving legal costs may be worth making certain sacrifices.
Have a Backup Plan
Strategic fallback positions can be quite helpful. Perhaps you may be willing to carve out certain goods or services to minimize the likelihood of confusion. Consider what you might be willing to give up, and then formulate a strategy around that with your trademark counsel.