Should you file a trademark opposition?
A trademark application is close to the finish line. A few more days left in the publication period, and the mark will be on its way to registration. Should you file a Notice of Opposition with the Trademark Trial and Appeal Board (TTAB). What does a TTAB trademark opposition case look like? How much would it cost? Can you settle early?
You have trademark questions. Hopefully, we can shed some light on how to navigate a TTAB trademark opposition.
How long is a trademark opposition?
Promptly after a Notice of Opposition is filed, the Board will set forth a Notice of Institution containing a schedule of deadlines. This trial schedule starts with the answer deadline and ends with an optional Request for Oral Hearing Due that typically spans over 15 months.
That certainly does not mean a trademark opposition will reach a decision within a year and a half. The Board can take several months to reach a decision after all deadlines are over. Moreover, extensions of time and suspensions occur quite frequently in trademark oppositions. Even a simple discovery motion, such as a motion to compel, can take months for the Board to decide which causes the remaining deadlines to get pushed back.
How much does a TTAB trademark case cost?
Legal costs can be wide ranging. It may be more helpful to estimate attorney’s fees by short, middle and long categories depending upon how vigorously the case is being fought. Ultimately, the cost of a trademark opposition will be a function of how much activity is required to obtain your desired result.
In a short case, both sides are amenable to an early settlement. For example, the opposer may simply want a coexistence agreement from the applicant. Approximate costs of a short trademark opposition may range from $3,000 to $10,000.
In a middle case, both sides have not come to an early amicable resolution. Accordingly, discovery will take place which increases costs. Each side may propound discovery requests such as interrogatories and document requests. A party want to take a deposition. Attending to such discovery requests can lead to significant attorney’s fees.
A middle case may involve a summary judgment motion. Even so, settlement is not out of the question. Occasionally, a motion for summary judgment may incentivize the parties to settle. Of course, the grant of a dispositive summary judgment would end the TTAB case.
A long case involves trial. The plaintiff has pretrial disclosures due followed by a 30-day trial period. Then it’s the defendant’s turn, followed by a rebuttal period for the plaintiff. Afterwards, briefs are submitted by the plaintiff and the defendant, followed by last reply brief by the plaintiff. An optional oral hearing may be requested.
While activity will subside after the trial schedule ends, it may be several months before the TTAB renders a decision. So be prepared to wait. A long time.
What is the most likely outcome?
I wrote a very unscientific post about the rough percentage of TTAB cases that reach final decisions. Statisticians would have a field day ripping apart my analysis of the TTAB data, but I think the overall conclusion is sound. A very high percentage of cases (i.e., over 90%) never reach a final decision. In this respect, TTAB cases are similar to IP litigation cases in federal courts which also rarely make it to trial.
So keep this perspective in mind when you’re contemplating a trademark opposition. Chances are high that your opposition may be a short or middle case.
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