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.
Am I Required to Hire an Attorney?
I can’t talk about trademark opposition costs without first addressing the biggest portion of such costs, which is almost always attorney’s fees. Needless to say, you’re probably wondering whether you’re required to hire an attorney to pursue or defend an opposition, or whether you can save all that money and just do everything yourself. Well, here’s the answer:
An individual whose domicile (i.e. permanent place of legal residence) is within the United States isn’t required to have legal representation in a trademark opposition. The same is true for an entity (such a corporation or LLC) that has its principal place of business or headquarters within the United States. They can file a notice of opposition, answer a trademark opposition, and go through the entire proceeding without any legal representation whatsoever. As you can imagine, the cost of a trademark opposition is significantly less if you choose not to work with a trademark attorney.
On the other hand, if an individual or entity is “foreign-domiciled,” then that individual/entity must retain a U.S.-licensed attorney to either pursue or defend an opposition. Therefore, the cost of a trademark opposition for foreign-domiciled individuals/entities will necessarily include legal fees.
But even if you’re not foreign-domiciled, it’s extraordinarily difficult to effectively pursue or defend a trademark opposition without the assistance of an experienced trademark attorney who is familiar with the hundreds of laws, rules, and regulations that govern opposition proceedings. I can tell you from experience, as well as from reading dozens of Trademark Trial and Appeal Board (TTAB) orders and decisions, that it rarely cuts pro se litigants any breaks. In other words, the TTAB generally holds unrepresented parties to the same high standards that it holds lawyers.
So, even if you’re domiciled in the U.S. and you aren’t required to hire an attorney, I urge you to carefully consider the wisdom of not doing so.
How Much Does a Trademark Opposition Cost as the Opposer?
If you’re the opposer (meaning the one who’s filing the opposition) and you decide to prepare/file the notice of opposition on your own, it’s possible you may only spend a few hundred dollars in government filing fees to successfully oppose a trademark application. But this only occurs when the owner of the opposed application fails to file an answer within the time allowed. If no answer is filed, a default judgment is granted and the trademark application goes abandoned. Opposition complete.
Of course, if the total cost of a trademark opposition typically comprised just the government filing fee, I’d have no reason to write this article.
What frequently happens is that the owner of the opposed trademark application files an answer to the notice of opposition and demonstrates its willingness to defend the opposition. This results in you having to do a lot more work to attempt to prove your case, including preparing initial disclosures, drafting discovery requests, conducting depositions, reviewing responses to discovery requests, filing motions and legal memorandums, preparing pretrial disclosures, taking witness testimony, filing notices of reliance, authenticating and submitting documentary evidence, and writing a trial brief. Although all of these things can theoretically be done by yourself for free or at minimal cost, the fact is that most people are going to need the assistance of a trademark attorney to do them properly. In addition, if the opposition isn’t amicably resolved between the parties soon after the notice of opposition is filed, you better ask yourself what your time is worth because you’ll spend at least 2-3 years of your life pursuing the opposition (and that’s the best case scenario).
How Much Does a Trademark Opposition Cost as the Defendant?
If you’re the defendant (meaning you’re the owner of the opposed trademark application) and you choose not to hire an attorney, the cost of a trademark opposition could conceivably be zero dollars. Why? Because, as the defendant, you’re only required to do four things throughout the entire opposition, none of which have any out-of-pocket monetary costs associated with them:
- File an answer
- Participate in the discovery conference
- Prepare and serve initial disclosures
- Respond to discovery requests
Now, if you only do those four things, the chances of successfully defending the opposition are exceedingly low. Most likely, you’ll lose the opposition and your trademark application will go abandoned because you’ll have presented no arguments or evidence to bolster your case and to rebut the opposer’s arguments and evidence. The TTAB will only hear one side of the story, and that side won’t be yours.
So, if you’re serious about defending a trademark opposition, you’re going to have to do much more than those four things. In fact, you’re going to have to do most of the same things I earlier mentioned that the opposer will have to do. Again, many of these things can theoretically be accomplished on your own at low or no cost, but without help from an attorney, the chances of you doing them in a manner that strictly complies with the TTAB’s rules and regulations is practically nil. And that’s not because I think you’re unintelligent or incompetent. Not at all. It’s merely because the rules are numerous, complicated, and nuanced.
What If I Hire an Attorney?
Regardless of whether you’re the opposer or the defendant, hiring an attorney is going to cost you a significant amount of money. Plain and simple. I don’t know any attorneys who charge less than $200/hour and some charge $500/hour or more.
As the potential opposer, you may find an attorney (such as myself) who offers a flat-fee for preparing the initial notice of opposition, but after that, most work will be charged on an hourly basis and nearly all attorneys will request an advance retainer of at least $3,000-$5,000.
As the defendant, you may come across an attorney (such as myself) who offers a flat-fee to attempt to settle the opposition (rather than litigate it). But, that fee is still typically going to be a minimum of $1,000-$1,500. If the opposition is unable to be resolved to the satisfaction of both parties, then you’ll have to decide whether you want to provide your attorney with a fairly substantial retainer and spend hundreds of dollars per hour defending the opposition.
In view of the high hourly rates attorneys charge for their time, knowledge, and expertise, it’s easy to see how trademark opposition costs could rise to tens of thousands of dollars (if not hundreds of thousands of dollars) incurred over a 2-3 year period. Yes, those costs can be controlled by being less aggressive and perhaps not doing absolutely everything you could do to strengthen your case. But, there are obvious risks involved in not wholeheartedly litigating the opposition if you’re serious about winning it.
Questions About Trademark Opposition Costs?
I’m experienced US trademark attorney Morris Turek. I regularly assist individuals, businesses, and non-profit organizations throughout the United States and across the globe with pursuing and defending trademark oppositions. If you have questions or concerns regarding the the cost of a trademark opposition and would like to discuss them with me, please don’t hesitate to contact me at (314) 749-4059, through email at email@example.com, or by filling out the contact form located below. I look forward to speaking with you soon.