When you file a trademark application to register your mark with the United States Patent and Trademark Office (USPTO), an examination process begins. This examination process mainly includes a search and analysis of other businesses and trademarks to assure that your mark does not cause a “likelihood of confusion.” However, the very last step of the examination involves the USPTO opening your mark up to a 30-day “opposition period.”
Essentially, this opposition period is to allow other trademark holders the chance to challenge your trademark if they think it is too similar to theirs. When someone files an opposition, you will receive a “notice of opposition.” This notice is very similar to a complaint in any other lawsuit and details why your trademark should not be registered. After you receive it, just like in a lawsuit, you have an opportunity to challenge the opposition. To make a long story short, if you win the opposition proceeding, your mark gets registered. If you do not win, your application is rejected.
What happens after I get a notice of opposition?
So, now you know what an opposition is and what the results could be, but you still don’t know exactly how it all works. Well, opposition proceedings actually carry on in roughly the same way a lawsuit was (if you are fortunate enough to not know how a lawsuit works, don’t worry, just keep reading). First, you, the applicant and recipient of the notice of opposition, have 40 days to file an answer or otherwise defend your application (“otherwise defend” most likely means you will file a motion to dismiss the opposition). After that, the proceeding carries on in accordance with a scheduling order issued by Trademark Trial and Appeal Board (TTAB) interlocutory attorney.
During this scheduled time, each party gets to conduct discovery. Discovery includes interrogatories (questions asked by your opposition), requests for production of documents, requests for admissions, and even depositions. After this scheduled time is up, each side has the opportunity to present the gathered information. The way the parties present the evidence is not like a normal trial. Instead, the parties simply submit all the evidence to the TTAB for review during what are called “testimony periods.” The evidence submitted is then reviewed by a board of TTAB judges.
The last thing that happens is that each side has the opportunity to submit written briefs. A brief will summarize the relevant facts of your case and will then analyze the law to explain why the TTAB should rule in your favor. In the end, a full opposition proceeding, that does not settle or otherwise end early, could take over a year. It is a lengthy and expensive fight. However, the value your trademark could provide for you and your business can outweigh the cost of fighting an opposition.
If you have received notice of opposition, don’t hesitate to contact an intellectual property lawyer to help you with the next steps. You can contact us here.
Written by third-year practicing law student John Riordan under guidance of Connors & Brenke.