1. Costs and Benefits of Trademark Opposition
2. Trademark Opposition Cost Drivers

A trademark opposition cost estimate includes a variety of factors, including the possible need to hire a trademark attorney. In many cases, opposing a trademark can cost thousands of dollars, but it may be worth the expense if the opposition is successful.

Costs and Benefits of Trademark Opposition

The most common reason for a trademark opposition is to determine if one trademark could be easily confused with another. Preventing trademark confusion is very important, as these marks are used to brand the goods and services offered by a business.

Several factors can be involved in a trademark opposition, but the likelihood of confusion is usually the prevailing issue. When determining whether trademarks could be confused with one another, multiple facts will be considered:

  • The similarity of the trademarks and the services or goods they represent.
  • The fame achieved by the older trademark.
  • If actual confusion has occurred.
  • If confusion was the intent of the similarities.

Research indicates that the cost of opposing a trademark can be prohibitive for smaller companies. The costs associated with trademark opposition can also result in small companies agreeing to a disadvantageous settlement that doesn't actually protect the company or its consumers.

The expense associated with opposing a trademark can depend on the country in which the trademark resides. Opposing a trademark in the United States, for example, is much more expensive than trademark opposition in other major countries. Following are some of the possible maximum costs of opposing a trademark in different countries:

  • India: $3,000.
  • China: $10,000.
  • European Union: $25,000.
  • Australia: $30,000.
  • United States: $500,000.

Trademark Opposition Cost Drivers

The main reason that opposing a trademark in the United States is so expensive is that the United States Patent and Trademark Office's (USPTO) Trademark Trial and Appeal Board must abide by strict procedural requirements. This includes practices related to motions and discovery. Another factor that increases the typical trademark opposition costs is that oppositions increasingly involve expert evidence, which can be very expensive to acquire.

In order to speed up resolutions in trademark opposition cases, the Trial and Appeal Board has instituted procedural requirements that are similar to those in civil court cases. Unfortunately, there is little evidence that these requirements have made it any easier to resolve trademark opposition cases, and their only real effect seems to be increasing the costs of these cases.

Prior to 2007, opposing a trademark in the United States required four simple steps, including:

  1. Filing a Notice of Opposition.
  2. Filing a response to the Notice of Opposition by the trademark applicant.
  3. A period of discovery.
  4. A period of testimony and briefing.

It was common for the Trial and Appeal Board to grant large extensions, which delayed completion of the opposition cases. These extensions, while lengthening the cases, also lowered total costs and made it more likely that the two parties would agree to a mutually beneficial settlement.

In 2007, there were changes to the trademark opposition procedure that added multiple requirements to the early stages of opposition, including:

  • A discovery conference.
  • Disclosing evidence voluntarily.
  • Disclosing expert opinions.
  • Pretrial disclosures by the opposer and the applicant, and opposer rebuttals.

These added requirements have tremendously increased the early expenses involved in opposing a trademark. Another requirement that increased costs is electronic discovery. This requires an applicant to research electronic records to find every instance where their trademark has been used.

In most other countries, there are not such strict procedures for opposing trademarks. For instance, most other countries do not have the discovery period that is required in the U.S., which is one of the reasons that trademark opposition is much more affordable in these countries. Similarly, filing motions is also usually not allowed in other countries.

Countries such as Canada and those in the European Union do have some procedures for trademark opposition that can add to costs, although they don't come close to the expense of trademark opposition in the United States.

The Canadian system for opposing trademarks has several similarities to the system in the United States. For example, expert and survey evidence are allowed in both countries. Something interesting about the Canadian system is that most arguments are submitted in writing, but it's possible to request an oral hearing.

If you need help calculating a trademark opposition cost estimate, you can post your legal needs on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.