Trademark Oppositions: What Happens After Filing

Filing a federal trademark application is not the last step. After the U.S. Patent and Trademark Office (USPTO) approves an application, it publishes the mark so that others have a chance to object. That objection is called an opposition. This guide explains in general terms where oppositions fit in the trademark process, what happens if one is filed, and what to consider whether you are the applicant or the business that wants to oppose.

Where opposition fits in the process

The USPTO walks through the steps on its trademark process page. In short, an examining attorney reviews the application. If there are problems, the USPTO sends a letter called an office action, and the applicant must respond by the deadline the USPTO sets.

If the examining attorney has no objections, or the applicant overcomes them, the USPTO approves the mark for publication in the Trademark Official Gazette, which the USPTO describes as its weekly electronic publication. The applicant receives a notice of publication with the publication date.

The opposition window

According to the USPTO, once a mark is published, any party who believes it may be damaged by the registration has 30 days from the publication date to file either an opposition or a request to extend the time to oppose.

If nobody files an opposition or an extension request, the application moves forward:

• For applications based on use in commerce (and certain foreign-based filings), the USPTO says it will register the mark and issue a certificate.
• For applications based on an intent to use the mark, the USPTO says it issues a notice of allowance about eight weeks after publication. The applicant then has further steps to complete, including showing use of the mark.

If an opposition is filed and is unsuccessful, the USPTO says the application continues to the next stage.

Who decides an opposition

Oppositions are handled by the Trademark Trial and Appeal Board (TTAB). The USPTO describes the TTAB as an administrative tribunal within the USPTO, and says an opposition is similar to a proceeding in federal court. According to the TTAB's office page, the Board decides several kinds of matters, including:

• Appeals from refusals to register trademarks
• Oppositions to the registration of trademarks
• Cancellations of registered trademarks
• Concurrent use registrations
• Appeals from expungement or reexamination of registered trademarks

The TTAB home page links to its filing system, called TTAB Center, its manual of procedure (the TBMP), fee information, a reading room of decisions, information on alternative dispute resolution, and a pro bono program.

What an opposition can look like

Because an opposition is similar to a court case, it usually involves formal steps. In general terms, a case may include:

1. The notice of opposition. The opposer files a document explaining why it believes registration should be refused.
2. The applicant's answer. The applicant responds to the claims by a deadline.
3. Discovery. The parties exchange information and documents under the Board's rules. The TTAB has a standard protective order to handle confidential information.
4. Trial periods and briefs. Each side submits evidence and written arguments.
5. A decision. The Board decides the case, unless the parties settle first.

Parties can also settle. They may agree to change the description of goods or services, add limits on how a mark is used, or withdraw. The TTAB also lists alternative dispute resolution as an option on its site.

The actual steps, timing, and rules for your case come from the TTAB's procedures, so read the TBMP sections that apply or ask a lawyer.

Common reasons businesses oppose

The specific legal grounds come from federal trademark law and the TTAB's rules, but in plain terms businesses often oppose when they believe:

• The new mark is likely to cause confusion with their own mark
• The mark is merely descriptive of the goods or services
• The applicant was not entitled to file for some other reason

Whether any ground fits your situation is a legal question. An intellectual property lawyer can review the facts.

If you are the applicant

• Watch your status. The USPTO advises applicants to keep monitoring their application. Make sure your contact information is current so you receive notices.
• Read the notice carefully. Look at what is claimed and the deadline to answer.
• Do not ignore it. Missing a deadline can lead to losing the application.
• Consider talking first. Sometimes the opposer is open to an agreement that lets both businesses operate.
• Think about cost and value. An opposition can take time and money. Weigh how important the mark is to your business.

If you want to oppose

• Act within the window. The 30-day period runs from publication. You can ask for an extension of time to oppose, but that request also has to be filed in time.
• Gather your evidence. Collect proof of your own mark's use, dates, and examples of confusion if any.
• Consider a letter first. In some cases, contacting the applicant before filing leads to a solution.

When to get help

Trademark oppositions follow formal rules, and mistakes with deadlines or evidence can be costly. Many businesses work with a lawyer for this reason. The USPTO also lists a TTAB pro bono program on its site for those who qualify. When you speak with a lawyer, ask about experience with TTAB proceedings, how they charge, and what a realistic budget might look like for your case.

Frequently asked questions

How long do I have to oppose a published trademark?

The USPTO says a party has 30 days from the publication date to file an opposition or a request to extend the time to oppose.

Is an opposition the same as a lawsuit?

No. It is a proceeding before the TTAB, an administrative tribunal within the USPTO. The USPTO says it is similar to a federal court proceeding.

What happens if no one opposes my mark?

The application moves to the next stage. For use-based applications, the USPTO registers the mark. For intent-to-use applications, it issues a notice of allowance.

Can an opposition be settled?

Yes, the parties can resolve it by agreement before the Board decides. The TTAB also lists alternative dispute resolution as an option.

Related: Browse more legal guides and find intellectual property lawyers near you.

This page is general information, not legal advice. Laws change and every case is different — talk to a licensed attorney about your situation.