Key Takeaways

  • The trademark opposition period in the U.S. lasts 30 days from publication in the USPTO’s Trademark Official Gazette.
  • Interested parties with legal standing can file a Notice of Opposition during this period to prevent registration.
  • Grounds for opposition include likelihood of confusion, descriptiveness, genericness, and bad faith filing.
  • The opposition process is similar to litigation and involves pleadings, discovery, and possible settlement.
  • Extensions of time to oppose can be requested, but deadlines are strict and missing them forfeits the right to oppose.

The U.S. trademark opposition period gives interested parties the opportunity to challenge a trademark before it is registered.

Basics of Trademarks

If you identify your business's goods or services using a logo, phrase, or word, this is known as a trademark.

As long as you continue to use your trademark for the purposes of your business, you will retain rights to your mark.

Trademarks do not have to be registered, as you will receive some protections simply by using your mark. If you do choose to register your trademark federally, however, you will have more protection and advantages than unregistered trademarks have, including:

  • The ability to sue for trademark infringement at the federal level.
  • Tripling your potential damages in a trademark infringement case.
  • Stopping others from using your trademark without your permission.

Every state has its own process for registering trademarks. Generally, state-level trademark registration is easier and more affordable than registering your trademark federally. In addition, there is no U.S. trademark opposition period for state trademarks, as there is with federal trademarks.

The drawback of registering your trademark at the state level is that it restricts your rights to the state where you register your trademark. Federal trademark protections extend across the entire country. If you are running a small company that only transacts business in one state, however, a state trademark registration can be a good choice.

Who Can File an Opposition

Any person or entity who believes they may be harmed by the registration of a trademark can oppose it, provided they have standing. This means they must demonstrate a direct and personal interest in the outcome, such as:

  • Owners of a similar or identical registered trademark.
  • Businesses using an unregistered mark with established common law rights.
  • Parties claiming the mark is generic, descriptive without secondary meaning, or misleading.

The opposition process is intended to protect both established brand owners and consumers from confusion or harm caused by misleading or conflicting trademarks.

Federal Trademark Registration

If you want to register your trademark federally, you can do so by applying with the United States Patent and Trademark Office (USPTO). When submitting your application, you will need to include examples of how you are using or intend to use your trademark and a drawing of your mark. The drawing should comply with USPTO rules. One of the most important steps in the trademark-registering process is having your application published in the Trademark Official Gazette.

The Gazette, published weekly, displays trademarks awaiting final approval. In addition to the marks themselves, it includes information about the applicants.

Once the Gazette publishes your trademark application, an opposition period of 30 days begins. During this period, third parties have the right to oppose your trademark by filing a notice. Opposition to your trademark can only occur during this period. After the 30-day period ends, opposition is no longer possible. Any third party can oppose your trademark as long as it has the grounds, as well as standing.

Grounds for Opposition

Oppositions can be filed on a variety of legal grounds, including:

  • Likelihood of Confusion: The applied-for mark is too similar to an existing mark, potentially confusing consumers.
  • Descriptiveness: The mark merely describes the goods or services and lacks distinctiveness.
  • Genericness: The mark is a common term for the goods or services.
  • Deceptiveness: The mark misleads consumers about a characteristic, quality, or origin of the goods or services.
  • Dilution: The mark would weaken the distinctiveness of a famous mark.
  • Bad Faith Filing: The applicant filed the mark with dishonest intent, such as to block a competitor.

Opposition Notice

When a third party files a notice opposing your trademark during the opposition period, you will receive a copy of this notice. The Trademark Trial and Appeal Board will also send you a notice that includes a deadline by which you must respond to the opposition. The Trial and Appeal Board handles a variety of USPTO proceedings, including trademark application opposition. The Board must act impartially, meaning it cannot give you guidance on how you should respond after your trademark has been opposed.

Responding to an Opposition

Once served with a Notice of Opposition, the applicant has 30 days to respond with an Answer. The Answer should address each allegation—admitting, denying, or stating insufficient knowledge—and may include affirmative defenses or counterclaims. Failure to respond by the deadline will result in a default judgment against the applicant, effectively ending their application. Timely and strategic responses are critical to preserving trademark rights.

Procedure for Opposition

The procedures for a trademark opposition are similar to those of a civil trial.

Several issues might influence how long the opposition proceeding takes, including:

  • The grounds of the opposition.
  • How the parties conduct themselves.
  • Whether a settlement is possible.

Whether or not you have hired an attorney, the Board has procedures it must follow.

Stages of a Trademark Opposition

A U.S. trademark opposition follows a structured process before the Trademark Trial and Appeal Board (TTAB):

  1. Pleadings Stage – Filing the Notice of Opposition and the applicant’s Answer.
  2. Discovery Stage – Both sides exchange evidence, documents, and witness testimony.
  3. Trial Stage – Submission of trial briefs and evidence; oral hearings may be requested.
  4. Decision – The TTAB issues a written decision, which can be appealed to federal court.

Opposition proceedings can be settled at any time, often through coexistence agreements, mark modifications, or withdrawal of the application.

Opposition Timeline

If you're interested in opposing a trademark, your first step should be to file a Notice of Opposition. You must file this notice during the opposition period. You can also request an extension so you have more time to file your notice.

The Pleadings Stage includes three important steps:

  • The filing of the Notice of Opposition.
  • The response of the trademark applicant, including potential counterclaims.
  • Answers to any counterclaims filed.

The Notice of Opposition will typically include information identifying the person opposing the trademark, a description of their standing, and their grounds for opposition. Most of these notices contain numbered paragraphs, which is the format that the USPTO recommends. When the applicant responds to the Notice of Opposition, he or she should either deny the allegations or admit their truth. The applicant will also have the opportunity to make an affirmative defense.

Extensions and Critical Deadlines

The USPTO strictly enforces opposition deadlines:

  • Initial Period: 30 days from publication to file a Notice of Opposition.
  • Extensions: You can request an initial 30-day extension (granted automatically) and an additional 60-day extension for good cause.
  • Maximum Duration Before Filing: 90 days from publication, unless both parties consent to a 180-day extension.

Missing these deadlines forfeits the right to oppose, and the trademark will proceed toward registration.

Frequently Asked Questions

  1. What is the U.S. trademark opposition period?
    It is a 30-day window after a trademark is published in the USPTO’s Trademark Official Gazette during which third parties can challenge its registration.
  2. Who can oppose a trademark application?
    Any party with standing—meaning they may be harmed by the mark’s registration—can file an opposition, including owners of similar marks or common law rights.
  3. Can the opposition period be extended?
    Yes. You can request up to 90 days total without consent, and up to 180 days with both parties’ agreement.
  4. What happens if the applicant does not respond to an opposition?
    If no Answer is filed within 30 days, the TTAB will issue a default judgment, and the trademark application will be denied.
  5. What are common grounds for trademark opposition?
    Common grounds include likelihood of confusion, descriptiveness, genericness, deceptiveness, dilution, and bad faith filing.

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