What is a trademark Notice of Opposition filed with the TTAB?

After a trademark application has been preliminarily approved by the USPTO examining attorney, the pending application will be published for opposition. In other words, your trademark will be published for a 30-day window, during which third parties may oppose your application or request an extension of time to oppose. If another party decides to oppose your trademark application, they will file a complaint called a Notice of Opposition.

The Notice of Opposition will set forth the third party’s claims for blocking the registration of your mark. The filing of the Notice of Opposition with the Trademark Trial and Appeal Board (TTAB) of the USPTO creates a legal proceeding called a trademark opposition which is essentially a mini-lawsuit. The TTAB will issue a scheduling order containing relevant deadlines.

Keep in mind that the issues litigated in a trademark opposition relate only to the registration of the mark, and not the applicant’s right to use the mark.

Here’s a helpful article on how to respond to a TTAB Notice of Opposition.

Who can file oppose a trademark application?

Anyone who believes they may be damaged by the registration of your mark may file a trademark opposition. Typically, opposers tend to be trademark owners who feel that your mark is too similar to theirs. An opposer might also be another applicant whose trademark application has been blocked due to your earlier filing date. In such situations, there may be room to negotiate an amicable resolution.

What is not involved in a trademark opposition?

A trademark opposition filed with the TTAB relates only to the issue of registration, not infringement. The outcome of a trademark opposition, however, may impact a subsequent legal action for infringement.

TTAB cases do not involve any money damages or attorney’s fees. The Board does authority to impose non-monetary sanctions.

What are next steps after receiving a Notice of Opposition?

The first thing to do is calendar your deadline for an answer, which is generally 40 days from the date you were served with the Notice of Opposition. Mark this due date immediately and set any helpful reminders. You will then need to find an experienced trademark attorney to formulate a trademark opposition defense and explore possible settlement strategies.

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Vic Lin

Startup Patent Attorney, Cofounder at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys help innovators get IP that drives funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com

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