How do you win a trademark opposition at the TTAB?
Before delving into how to win a trademark opposition, we first need to define victory. From the perspective of a trademark applicant defending an opposition, victory might be the eventual registration of the mark. For opposers, a win may consist of a withdrawal or abandonment of the opposed trademark application.
Regardless of whether you are the plaintiff or defendant, recognize that a TTAB proceeding typically covers only the registration of the mark. In other words, a trademark opposition victory might not have anything to do with the use of a mark.
Need to win a trademark opposition? Call patent and trademark attorney Vic Lin at (949) 223-9623 or email vlin@icaplaw.com to explore working with us. See our flat rate trademark opposition attorney’s fees.
How to Win as the Trademark Opposer
As the opposer who filed the opposition, you bear the burden of proof. That means that opposers have the burden of proving their case. What must be proven, therefore, depends on the specific claims contained in the Notice of Opposition. An opposer generally cannot argue claims missing from, or not inherent in, their complaint.
Therefore, make sure your pleadings adequately cover your grounds for opposing the mark. If new evidence surfaces later that would support additional claims, file a motion to amend pleadings to add the new claims.
There are substantive victories and procedural victories. Procedural victories are cheaper and faster. You win because the other side, for example, failed to respond to discovery requests. So you file a motion to compel and, if the other side still fails to provide discovery responses, a motion for sanctions.
A substantive victory takes significantly more time and money. You’re seeking a Board decision on the merits. Unless you prevail on a summary judgment motion, you will basically have to win a TTAB trial.
What if an opposer does not want to go all the way? Can a compromise be considered a win for opposers? If coexistence is an option, consider a consent agreement with certain restrictions that you can live with.
How to Win as the Trademark Opposition Defendant (Application Owner)
The defendant in a TTAB opposition is the applicant, or the owner of the opposed trademark application. Also known as the respondent, the opposition defendant is trying to get the opposed mark registered.
We’ve stated that the burden of proof falls on the opposer. Therefore, one path to victory for a defendant is to make the opposer prove their case. Defendant-applicants might be able to achieve this by simply surviving. Staying alive can be an effective strategy for defending an opposition.
If the opposer is open to the possibility of coexistence, then see if you can negotiate a consent agreement with specific limitations. Perhaps victory is a compromise where each side is neither happy nor disappointed.
What will a trademark opposition cost?
Costs for winning a trademark opposition will depend on whether you are the opposer or application owner. Generally, opposers will face higher costs because they bear the burden of proving their claims.
For flat fees on winning a trademark opposition, see our TTAB attorney fee schedule here.
Like any litigation, total costs will depend upon the other side’s willingness and ability to fight.
