Once the United States Patent and Trademark Office approves a federal trademark application, the trademark is published for opposition. Publication is accomplished by listing the trademark in the Official Gazette, a weekly USPTO publication. The trademark appears in the Official Gazette for 30 days, but this "opposition window" may be extended if a party files a request to extend the time.
The Notice of Opposition
If a party, or group of parties, feels that registration of the trademark will be harmful to them, they may file a Notice of Opposition during the opposition window. A Notice of Opposition is nearly identical to a federal court complaint. The filer, or "opposer," must set forth a fact supporting each element of its claims. The opposer must also establish standing, or his right to oppose the registration by demonstrating how the opposer would be damaged.
Grounds for Opposition
Typical grounds for opposition include the likelihood of confusion, priority (opposer was the first to use the mark), the trademark is descriptive of the goods or services claimed, the mark is not distinctive, or the mark has become a common descriptive name of an article or substance. Other, less asserted grounds for opposition include, abandonment of the trademark through non-use, fraudulent or illegal registration, applicant is precluded from the registration via court order, the trademark includes a government insignia, the trademark contains immoral, deceptive or scandalous matter, and the mark identifies a living individual without that person's consent. Many of the same grounds can also be asserted in a trademark cancelation proceeding.
Once the Notice of Opposition is filed, the owner of the trademark being opposed has 40 days to file an Answer. The Answer must either admit or deny every allegation in the Notice of Opposition. The Answer must also include any affirmative defenses or counterclaims the applicant wishes to assert. An affirmative defense acknowledges an apparent right held by opposer but relies on some new matter by which opposer's rights are defeated. As such, an applicant must be careful about asserting such defenses. A counterclaim is a claim that an applicant has against the opposer that arises out of the same occurrence or transaction that is the subject of the opposition. A counterclaim can include a request to cancel or restrict one or more of the registration on which opposer relies. If a counterclaim is asserted, the applicant must remember to pay the fee associated with the request for cancelation.
The opposer has the opportunity to reply to the Answer, and the opposition moves on to discovery and a lengthy opposition schedule, which does not typically includes several motions that are filed by both parties.
Here's a sample opposition schedule:
Time to Answer 11/28/2018
Deadline for Discovery Conference 12/27/2018
Discovery Opens 12/27/2018
Initial Disclosures Due 1/27/2019
Expert Disclosures Due 5/26/2020
Discovery Closes 6/26/2020
Plaintiff's Pretrial Disclosures Due 7/10/2020
Plaintiff's 30-day Trial Period Ends 8/24/2020
Defendant's Pretrial Disclosures Due 9/8/2020
Defendant's 30-day Trial Period Ends 10/23/2020
Plaintiff's Rebuttal Disclosures Due 11/7/2020
Plaintiff's 15-day Rebuttal Period Ends 12/7/2020
Plaintiff's Opening Brief Due 2/5/2021
Defendant's Brief Due 3/6/2021
Plaintiff's Reply Brief Due 3/21/2021
Request for Oral Hearing (option) Due 3/31/2021
Oppositions can be complicated, expensive and lengthy.
Ahaji Amos is an attorney at Ahaji Amos, PLLC, a law firm that represents startup and small businesses in all matters including patent prosecution, trademark prosecution, copyrights, trade secrets, oppositions, cancelations, equity funding and commercial litigation. Ahaji Amos, PLLC is dedicated to representing entrepreneurs, inventors, and innovators.