Key Takeaways:

  • The trademark opposition process consists of distinct phases: Notice of Opposition, Answer, Discovery, Pretrial and Trial, and Final Decision.
  • Discovery is a vital phase where evidence is exchanged between parties, laying the groundwork for the case.
  • The TTAB issues a final decision based on the presented evidence, which can be appealed.
  • Missing key deadlines, such as filing a Notice of Opposition or an Answer, can lead to automatic losses or default judgments.
  • The parties can negotiate settlements at any stage of the opposition process, often avoiding the need for a final decision by the TTAB.

Trademark opposition timeline is the process by which an individual or company can protest a pending trademark based on certain factors. Once a trademark has been approved via Notice of Allowance for intent to use applications and Publication and Issue Review Complete for existing marks, the mark is published for opposition and can be protested by anyone who has grounds to do so.

Steps in the Trademark Opposition Timeline

Trademark opposition proceeds in a similar manner as a legal trial, except that the pertinent documents are filed with the Trademark Trial and Appeal Board (TTAB). Trademark judges decide whether an opposition is valid based on submissions from both parties. Although the proceedings in a trademark opposition case can last for more than a year, more than 95 percent of oppositions are settled before a trial.

  • First, the opposing party must file a Notice of Opposition. This document consists of numbered paragraphs that identify the opposer and establish claims and grounds for opposition. If this cannot be done during the designated time period, he or she can also file an extension.
  • After the Notice is filed, the Pleadings stage begins and the trademark applicant must defend the claims in the Notice and may raise counterclaims.
  • The opposer then has an opportunity to answer counterclaims if applicable.

In the trademark opposition process, the timeline is structured with specific phases that each serve a distinct purpose. Understanding these phases is critical to navigating the process effectively:

  1. Notice of Opposition: This is the initial phase where the opposing party files a Notice of Opposition with the Trademark Trial and Appeal Board (TTAB). The notice must be filed within 30 days after the trademark application is published in the Official Gazette.
  2. Answer: The trademark applicant must respond to the opposition by filing an Answer within 40 days from the date of the notice of opposition. In the Answer, the applicant must address each claim made by the opposer and provide defenses to the opposition.
  3. Discovery Phase: During discovery, both parties gather evidence to support their claims. This phase involves the exchange of documents, depositions, and interrogatories. Discovery is crucial as it helps build a strong case by uncovering the strengths and weaknesses of both sides.
  4. Pretrial and Trial Phase: Pretrial procedures include motions that may dismiss the case or limit the issues that will be tried. If the case proceeds to trial, it usually involves the submission of evidence and testimony in writing rather than live court appearances.
  5. Final Decision: After both parties have presented their cases, the TTAB will issue a final decision. The losing party may appeal the decision to the U.S. Court of Appeals for the Federal Circuit or, in some cases, to a federal district court.
  6. Possible Settlements: At any point during the opposition process, the parties may negotiate a settlement. Settlements can occur through mutual agreement or through mediation services provided by the TTAB.

Affirmative Defenses

When the trademark applicant answers the Notice of Opposition, he or she must either admit or deny its allegations. Affirmative defenses can also be asserted and can include:

  • Acquiescence
  • Estoppel
  • Fraud
  • Laches
  • Mistake
  • Unclean hands
  • Prior registration defense
  • Prior judgment

Trademark Trial and Appeals Board Rules of Practice

New rules of practice for TTAB were implemented by the United States Patent and Trademark Office (USPTO) as of January 2017. These updated guidelines are designed to increase the efficiency of proceedings, formalize practices, and lower costs.

Paperless filing has been implemented as parties are encouraged to use the TTAB electronic filing system (ESTTA). E-mail is the default service system, which eliminates the extra time created when documents are filed through postal mail.

Deadlines For Opposition and Cancellation

Parties can extend the window between publication and opposition by up to 180 days. The extension form can only be filed electronically with no exceptions, so it's important to file an extension under Section 66 as soon as possible. Section 1 or 44 extension requests can be made with a paper filing only if ESTTA is down.

All applications carry a 30-day opposition period. Extension requests can be made for 90 days or for a 30-day extension followed by a 60-day extension. 60-day single extensions are no longer available, though a final 60-day extension may be given if the applicant concedes.

Each extension request carries a $100 fee if filed electronically, or $200 for the final 60-day extension. The respective fees for paper filing are $200 and $300.

Madrid application oppositions must be filed electronically with no exceptions. Other oppositions and petitions can be filed by paper only if ESTTA is unavailable. Priority Mail Express must be used if the opposition is being filed at the deadline or if the petition for cancellation contains time-sensitive claims.

When opposing a Madrid application, the notice's cover sheet must include the grounds, goods, and services included in the claims. Additional claims cannot be added after the opposition deadline.

When a notice or petition is correctly submitted, you'll receive an email from TTAB with a link to the electronic proceeding. Petitions must include the name, address, and email address of the registration owner. For this reason, registration owners must keep contact information updated.

Consequences of Missing Deadlines

Missing deadlines in the trademark opposition timeline can have severe consequences. If the opposing party misses the deadline to file a Notice of Opposition, the trademark will proceed to registration without challenge. Similarly, if the applicant fails to file an Answer within the given timeframe, the opposition may be decided in favor of the opposer by default. It's crucial to adhere to all deadlines and, if necessary, request extensions to avoid adverse rulings. Extensions may be granted under certain circumstances, but they require proper justification and should not be relied upon as a strategy.

Key Takeaways:

  • The trademark opposition process consists of distinct phases: Notice of Opposition, Answer, Discovery, Pretrial and Trial, and Final Decision.
  • Discovery is a vital phase where evidence is exchanged between parties, laying the groundwork for the case.
  • The TTAB issues a final decision based on the presented evidence, which can be appealed.
  • Missing key deadlines, such as filing a Notice of Opposition or an Answer, can lead to automatic losses or default judgments.
  • The parties can negotiate settlements at any stage of the opposition process, often avoiding the need for a final decision by the TTAB.

Discovery

The new TTAB rules limit and streamline the discovery process. This gives the parties flexibility to limit its scope, agree to reciprocal disclosure, or shorten response time. Requests must now be served early in the discovery period rather than just before it closes.

New rules limit document and admission requests to no more than 75 each, including subparts, to narrow the scope of discovery. A party can object if more than 75 requests have been included in discovery. These rules are designed so that parties focus only on required claims information rather than on generalizations.

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