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What Is A Trademark Opposition?
July 29, 2024
Attorney and client in an office, discussing options for handling a trademark opposition.

Trademarks are identifiers, such as brand names, logos, or in some instances even distinctive sounds, that businesses use to distinguish their goods or services from similar goods or services offered by their competitors. Before a trademark can be registered with the United States Patent and Trademark Office (USPTO), it will need to undergo a publication period designed to let parties that might be harmed by the registration file a trademark opposition. Any trademark opposition will need to be resolved before the formal registration can move forward. To learn more about how to handle a trademark opposition, consider reaching out to a member of the experienced intellectual property law team at Sullivan & Carter, LLP. From our Chicago-based office, we handle federal trademark registrations across the country. Call (929) 724-7529 to set up a consultation.

How Are Trademarks Regulated?

Jurisdiction over trademarks in the United States is determined to a large extent by the Commerce Clause in the United States Constitution, which authorizes Congress to regulate trade between the states. As the<a href="https://constitution.congress.gov/browse/essay/artI-S8-C3-3/ALDE_00013405/"> Constitution Annotated points out, historically the phrase "among the several states" has been interpreted by United States courts to exclude from federal purview any business transactions that take place solely within the borders of a single state. </a>

What this historical quirk means for trademarks is that any trademarks used exclusively within a single state typically fall under the jurisdiction of the relevant authorities in that state. However, state-level trademark registration necessarily offers limited protections, and since relatively few businesses make confining their activities to intrastate transactions part of their development plan, in practice it is very common for even small entrepreneurial startups to proceed with the application process for federal trademark registration through the USPTO, which derives its authority from the United States Department of Commerce.

Pending Trademark Publication

In technical terms, the USPTO does not grant trademark in the way that it grants patents; rather, the USPTO registers trademarks, through a demanding examination process designed to ensure that the mark meets stringent criteria for distinctiveness and that the party applying to register the mark has what is known as "right of priority." These two essential elements are grounded in the public-interest function of trademarks and in the common-law derivation of trademark rights, respectively. One of the final stages in the USPTO trademark application process is the publication of the pending trademark registration in the USPTO's Official Gazette to give parties who might be adversely affected by the registration to file a Notice of Opposition through the USPTO's Electronic System for Trademark Trials and Appeals.

What Does It Mean To Oppose a Trademark?

In its guide to United States trademark procedures, the World Intellectual Property Organization (WIPO) explains that any party that expects to suffer harm (such as diminished market share) as a result of the mark's successful registration will have 30 days from the date the publication first appears in the Gazette to file their Notice of Opposition. USPTO guidelines for initiating a new proceeding with the Trademark Trial and Appeal Board (TTAB) require that the notice be accompanied by a "proper pleading" that outlines:

  1. Why the party filing the notice of opposition has legal standing to oppose the trademark registration
  2. Legal grounds for their opposition

Both elements can involve some tricky technicalities, so if you have questions about how to evaluate legal grounds or standing related to a trademark opposition, you may wish to consider seeking professional counsel. An experienced intellectual property attorney with Sullivan & Carter, LLP may be able to review your situation and help you assess the factors that apply.

Legal Standing for a Trademark Opposition

According to § 309.03(b) of the Trademark Trial and Appeal Board Manual of Procedure (TBMP), "legal standing" to initiate a new proceeding opposing a trademark registration means that the party filing the notice of opposition can show a "statutory cause of action." Under TMBP § 303.03, the statutory cause of action – in TTAB proceedings as in the civil court system – is tied to the legal concept of damages, the harms the plaintiff in a court case (or the party opposing a trademark registration in a TTAB proceeding) claims to have suffered or to be likely to suffer as a result of defendant's (or trademark applicant's) actions.

The party filing a notice of opposition is not required to prove that they have suffered or will suffer "actual damages" as a result of the trademark registration in order to meet the TTAB's "proper pleadings" requirement, but they must give a brief explanation of the factual basis on which they reasonably expect to suffer such damages if the trademark registration is finally approved.

What Are the Grounds for Opposition to a Trademark?

Opposing a new trademark registration on the grounds that it infringes on the opposing party's existing right of priority under 15 U.S.C. § 1057 is fairly common. However, TBMP § 309.03(b) explicitly highlights the fact that the party opposing the trademark registration need not allege "proprietary rights" in order to show they have standing, the non-exhaustive list of possible legal grounds for opposing a new trademark registration provided under TBMP § 309.03(c)(1) includes a number of potential grounds linked to likelihood of confusion, lack of distinctiveness, infringement on the plaintiff's right to description, and the like.

How Much Does a Trademark Opposition Cost?

Trademark opposition can be a costly undertaking, both for the party opposing the registration and for the applicant whose pending trademark registration is opposed. The filing fee for a notice of opposition was updated in 2022 to $600 per trademark class, according to the USPTO's trademark fee schedule. For the trademark registration applicant, meanwhile, the additional delay in finalizing trademark registration is all too likely to result in loss of revenue – even if the applicant is ultimately successful in overcoming the opposition and receiving their certificate of registration. In addition, if the applicant wishes to file a counterclaim to cancel a mark in use by the opposing party, the counterclaim will, like the original opposition, be subject to a fee per trademark class challenged, according to the WIPO.

Contact an Experienced Attorney for Trademark Opposition Matters

Whether you have just received service notifying you that your pending trademark registration is now being opposed, or find yourself needing to file a USPTO notice of opposition to protect your own intellectual property rights, the legal questions underlying trademark opposition procedures can be daunting. Business owners can easily find themselves spending countless hours attempting to navigate the TTAB system, only to discover that they have missed a crucial deadline or failed to properly format their pleadings. An intellectual property attorney experienced in filing and responding to trademark oppositions may be able to review your trademark opposition matter and assist you in evaluating your options for remedy through the Trademark Trial and Appeal Board. Consider scheduling a consultation with Sullivan & Carter, LLP by calling (929) 724-7529 today.

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