If you’re reading this article, chances are you need to answer a trademark opposition that has been filed against your trademark application. As you may already know, a trademark opposition is filed with the Trademark Trial and Appeal Board (TTAB) for the purpose of challenging your right to register your trademark. Unless you have a legitimate legal basis for filing a motion to dismiss the opposition (which is fairly rare), the first step you’ll need to take after the TTAB institutes the opposition proceeding is to prepare and file an answer.
What is the Deadline to Answer a Trademark Opposition?
After the notice of opposition is filed, the TTAB will formally institute the opposition proceeding and will issue a schedule that lays out all of the dates by which certain actions need to be taken. The first item on that schedule is the deadline for filing the answer. Generally speaking, you must answer a trademark opposition within 40 days of the TTAB instituting the opposition proceeding. You have to file the answer electronically through the ESTTA system and you have to properly serve a copy of the answer on the opposer (generally via email).
What if I Don’t Answer a Trademark Opposition?
If you choose not to answer a trademark opposition, or you inadvertently miss the deadline for filing the answer, the TTAB will issue a Notice of Default. You’ll then have 30 days in which to show cause as to why the TTAB shouldn’t enter judgment against you. If you don’t file a response to the Notice of Default, the TTAB will sustain the notice of opposition and your trademark application will go abandoned.
What Must the Answer Include?
When you answer a trademark opposition, it goes without saying that you need to comply with all legal and procedural requirements. I strongly recommend reviewing Section 300 of the Trademark Trial and Appeal Board Manual of Procedure (TBMP) to familiarize yourself with the relevant rules. Having said that, an answer primarily consists of numbered paragraphs that correspond with the numbered paragraphs in the notice of opposition. In each paragraph of the answer, you should simply admit or deny the allegations set forth in the corresponding paragraph of the notice of opposition. Essentially, the answer should mirror the notice of opposition as closely as possible.
The answer may also include what are called “affirmative defenses.” These are legal defenses you may have which, if proved at trial, would negate or defeat the opposer’s notice of opposition. In addition, the answer may include a counterclaim for cancellation of any trademark registrations owned by the opposer that it’s relying on as a basis for opposing your trademark application. Please note that filing a counterclaim for cancellation will require that you meet all pleading requirements set forth in Section 300 of the TBMP. A counterclaim for cancellation will also necessitate payment of a filing fee.
What Should the Answer NOT Include?
A lot of people believe that when you answer a trademark opposition, you should include arguments and evidence supporting your position that the opposer’s claims are without merit. Nothing could be further from the truth. The answer is not a place for making legal arguments or attempting to disprove the opposer’s case. None of that will be considered by the TTAB at any point during the opposition proceeding. The same is true for any documents or other materials you attach as exhibits to the answer. The TTAB will only consider evidence that has been properly authenticated and submitted during your 30-day trial period (which is initially scheduled for about one year after the answer is due).
Answer a Trademark Opposition with Help from a Trademark Attorney
I’m experienced US trademark attorney Morris Turek. If you need to answer a trademark opposition but are uncomfortable preparing and filing it yourself, I would be glad to provide you with prompt and professional assistance. I can be reached at (314) 749-4059, by sending me an email to morris@yourtrademarkattorney.com, or by submitting the contact form located toward the bottom of this page. I look forward to speaking with you soon.