Trademark Opposition Archives

What are Initial Disclosures in a Trademark Opposition or Trademark Cancellation?

Initial Disclosures

Preparing and serving Initial Disclosures on the opposing party is one of the first things you must do in a trademark opposition or trademark cancellation proceeding. The deadline set by the Trademark Trial and Appeal Board (TTAB) for serving Initial Disclosures is generally about a month after the deadline for participating in the discovery conference. However, the Initial Disclosures deadline can quite easily be extended through mutual agreement between the parties and approval by the TTAB. In fact, the deadline is often extended multiple times because the parties might be engaged in ongoing negotiations to amicably resolve or settle the opposition/cancellation.

What is the Discovery Conference in a Trademark Opposition?

discovery conference

The discovery conference is the first thing the parties must do in a trademark opposition after the answer is filed. The Trademark Trial and Appeal Board (TTAB) requires that the parties discuss specific matters related to the opposition prior to the opening of the discovery period. The discovery conference may be conducted between the parties in-person, but it’s almost always done over the phone. Generally speaking, the TTAB doesn’t participate in the discovery conference. However, one or both of the parties may request that a TTAB representative help facilitate the conference, which could be especially useful if at least one of the parties isn’t represented by an attorney.

How Much Does a Trademark Opposition Cost?

trademark opposition cost

The total cost of a trademark opposition can be anywhere from zero dollars to over $100,000. Yes, I know that’s a huge and scary range, but it’s the honest truth. There are many variables that affect the cost of pursuing or defending a trademark opposition, including:

Whether you’re the opposer or the defendant
Whether you hire an attorney or not
The number and complexity of the issues raised in the opposition
The amount of time and effort you’re personally willing to put into pursuing/defending the opposition
The aggressiveness of the parties and/or their attorneys
Whether the trademark opposition can be amicably and quickly settled between the parties in some manner

As you can see, some of these variables you’ll have control over, whereas others you won’t. And that’s what makes estimating trademark opposition costs so frustrating, difficult, and frankly not very reliable.

How Do I Answer a Trademark Opposition?

Answer Trademark Opposition

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 an Extension of Time to Oppose a Trademark Application?

Extension of Time to Oppose Trademark

Filing an extension of time to oppose a trademark application is a relatively easy and inexpensive way to reserve your right to file a trademark opposition. It provides you with more time to carefully consider the cost of a trademark opposition and whether you want to invest your valuable time and money in formally opposing a trademark application. It also gives you time to contact the owner of the trademark application in order to discuss any questions or concerns you may have regarding the trademark or any of the information presented in the trademark application.