Trademark Opposition

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.

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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.

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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.

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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.

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A trademark opposition is a legal challenge to the right to register a particular trademark.  There are thousands of trademark oppositions filed every year, which certainly sounds like a lot, but is actually quite small relative to the number of trademark applications filed annually.

A trademark opposition is initiated by electronically filing a notice of opposition with the Trademark Trial and Appeal Board (TTAB) through the ESTTA system and paying the required fee.  The notice of opposition must be filed within 30 days of the date that the trademark application is published for opposition, unless a request for an extension of time to oppose is filed with the TTAB (which is usually automatically granted).  If you unfortunately miss the opposition window, then you’ll need to wait until the trademark actually registers and then file a trademark cancellation against the registration.

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