Trademark Opposition Lawyer

A trademark opposition is a formal proceeding filed with the Trademark Trial and Appeal Board (TTAB) that challenges a published trademark application before it registers. Any party who believes they would be damaged by registration of the mark can file an opposition within 30 days of the publication date, or within an extended period obtained through a timely extension request. You do not technically need a lawyer to file a notice of opposition, but the proceeding is structured like civil litigation with discovery, testimony periods, and legal arguments. Representation by a trademark lawyer significantly improves the quality of the filing and the conduct of the proceeding.

The USPTO publishes trademark applications for opposition after the initial examination is complete. Any party who wants to oppose has 30 days from the publication date to file a notice of opposition or request an extension of time. Extensions can be granted for good cause and can extend the window by up to 180 days total. After the full extension period expires, the application proceeds toward registration unless the opposition is already on file.

Yes. Federal trademark registration is not required to file an opposition. You can oppose based on common-law trademark rights established through prior use in commerce, a pending application with an earlier filing date, or other grounds such as fraud on the USPTO, likelihood of dilution, or prior use of a geographically descriptive term. The strength of an unregistered rights opposition depends on the quality and geographic scope of the evidence of prior use.

The most common ground is likelihood of confusion with a prior mark, which can be a registered trademark, a pending application, or a mark established through common-law use. Other grounds include that the mark is merely descriptive of the goods or services, that the applicant has not actually used the mark in commerce, or that the application was filed fraudulently. In most opposition proceedings, likelihood of confusion is the primary ground, with additional grounds added where the evidence supports them.

A TTAB opposition proceeding that goes through full discovery and trial typically takes 2 to 4 years. However, most oppositions resolve before reaching a final decision. The TTAB reports a settlement rate of approximately 95% for inter partes proceedings. Settlement typically happens within the first several months through a consent agreement or coexistence arrangement. If the case proceeds through discovery, the timeline and cost increase significantly.

When your application receives a notice of opposition, you have 40 days to file an answer with the Trademark Trial and Appeal Board. The answer must respond to each allegation in the notice. If you fail to file an answer, the TTAB may enter default judgment in favor of the opposer. Before deciding whether to defend, negotiate, or consent, a trademark lawyer should review the notice and assess the strength of the opposing party's claimed rights relative to your own. Many opposition cases settle within the first few months.

Yes, and most do. TTAB oppositions settle at a rate of approximately 95% before a final decision is issued. Settlement typically takes the form of a consent agreement or coexistence arrangement that defines the boundaries of each party's trademark rights: geographic limits, product category restrictions, and mutual non-interference provisions. The TTAB will accept a voluntary dismissal or a consent agreement to dismiss at any point in the proceeding. A negotiated settlement is almost always faster and less expensive than a contested proceeding.

If the opposition succeeds, the TTAB issues a decision refusing registration of your application. That does not necessarily mean you have to stop using the mark, but it means you cannot obtain federal registration, which significantly limits your enforcement options. If your use of the mark predates the opposer's filing, you may retain common-law rights in the geographic areas where you have been using it. A loss at the TTAB can be appealed to the Federal Circuit or to a federal district court within two months of the decision.

A trademark opposition challenges an application that has been published but not yet registered. It takes place during a defined window before the registration issues. A trademark cancellation challenges a mark that has already registered. Cancellation proceedings also take place at the TTAB, but the grounds for cancellation differ: some grounds are only available for the first five years after registration, while others (like genericness or fraud) can be asserted at any time. Cancellation is generally more difficult to win than opposition because the registered owner has the presumption of validity in their favor.

The TTAB filing fee for a notice of opposition is $600 per class. An opposition that settles through a consent agreement within the first several months typically costs $3,000 to $8,000 in attorney fees. An opposition that proceeds through discovery and trial costs significantly more. The cost of defending an opposition is comparable to the cost of prosecuting one. I assess the likely cost of each path and provide a clear budget before any proceeding begins.