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Notice of Opposition – What is it?

by | Jan 26, 2023 | Trademark

Are you a small business, creative, or start-up eager to protect and develop your intellectual property (IP) and bring it to market? Do you know what difficulties may arise in the process? Notice of Opposition is one such difficulty. But don’t worry; this blog post will provide information on what a notice of opposition entails! Since IP involves complex matters like registration, protection, and managing rights, we understand the process can seem confusing.

What is a Notice of Opposition?

A “notice of opposition” is precisely what it sounds like: opposition to the registration of a trademark application filed by a third party at the Trademark Trial and Appeal Board (TTAB). Usually, these are filed by those who own a trademark against those who are filing for registration for a mark on the grounds of the likelihood of confusion and dilution.  In this scenario, a trademark owner asserts that the applicant’s applied-for mark will somehow interfere with their brand’s value or dilute it.

Whenever an applicant applies for a trademark, be it a 1a (in-use) or 1b (intent-to-use) application, an examining attorney at the USPTO is assigned to review and potentially clear the application for publication in the trademark official gazette. After a mark’s publication, a third party has 30 days to oppose the application on various grounds discussed previously on my website and youtube channel.

The most common basis for filing an opposition is a likelihood of confusion between the two marks. For more information on how the USPTO handles disputes, check out our blog on trademark office disputes.

Oppose A Trademark in the U.S

To file a notice of opposition is considered to be the first step. But before that, brand owners should be mindful of the validity of their case before the trademark office.  If you notice trademark infringement on your brand, you should ideally send a cease and desist letter to enforce your trademark rights before you assess your grounds for opposition. This way, matters that may be resolved amicably do not end up before the United States Patent and Trademark Office. Failing that, brand owners may file a letter of protest whilst an opposing trademark application is still pending.

A letter of protest is an informal mechanism by which brand owners can flag potential issues before formal opposition proceedings start. This has two effects: (1) it records the timeline of events on record; (2) it makes your case stronger before the USPTO. If your case appears strong on the outset, having exhausted all avenues to communicate with the opposition side as well as pointing out all the potential areas of confusion, you end up saving the examiner’s time and that makes your stance that much stronger for any adjudicating authorities. For more information, check out the USPTO’s letter of protest practice tip.

Note For Opposers

  • Brand owners have a responsibility to police and enforce their trademarks, or they risk weakening the brand’s strength in the marketplace.
  • Brand enforcement and policing through a trademark attorney involve potential conflicts like an opposition proceeding at the TTAB. However, not every potential conflict requires a notice of opposition.
  • Although the initial period to file an opposition is within 30 days from the publication of the application, an opposer can obtain an automatic 30-day extension to oppose or a 90-day extension on motion by showing good cause.

Note For The Trademark Applicants

  • Discussing the merits of the opposers’ claims in the filed complaint with a trademark attorney is essential.
  • Aside from arguing against the opposition, other outcomes should be discussed, including settlement agreements and possible rebranding.
  • Proceedings like these can be avoided, or brand owners can be better prepared if they work with a trademark attorney who can help them perform a comprehensive search & clearance before filing a trademark application.

Where A Notice For Opposition Is Relevant [Trademark Proceedings]

The following scenarios are those under which you may encounter a notice of opposition:

  1. As a trademark owner, you have the potential to be injured by a third party’s registration or;
  2. As an applicant has received a notice of opposition.

At the end of the day, brand owners seek the cancellation of the application of those who are infringing on their marks. For more information on this, check out our blog post on the common grounds for trademark cancellation.

Opposition Proceedings After Filing A Notice Of Opposition

For official TTAB proceedings, you need to ensure that all the information you have at hand is relevant. A potential opposer will aim to exploit any weaknesses you have in your registration while they are waiting on their pending trademark. During the proceedings where you petition to cancel another party’s trademarks after you have filed the opposition, you will have to answer a series of questions under oath in an interrogatory. These questions will include, among other things, your reasons for filing a trademark opposition proceeding, the grounds for opposing a trademark and the date of registration of the trademark. And so all of your communications must be uniform with no outlying information.

Conclusion

A Notice of Opposition may seem daunting, but with the right trademark attorney on your side, it does not have to be. If you are an Opposer or an Applicant and have received a Notice of Opposition, reach out to us today. We can help you every step of the way; from filing the relevant paperwork to opposing or defending a claim. Schedule a discovery call with us today. For more information on shielding your brand via trademark protection mechanisms, check out our blog posts on trademark monitoring and maintaining trademark protection.

Are you a trademark owner concerned about the potential damage caused by another’s registration? Have delays in your own application process left you feeling disheartened? Don’t worry; I’m here to help make that vision of yours come true! Why not take advantage of our discovery call and let us figure out this puzzle together – no pressure involved? We’ll chat through your values, and aspirations and get those nagging questions answered. So book an appointment now; there is nothing standing between you and success any longer!

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