A trademark opposition proceeding is similar to a litigation in federal court, but is held before the Trademark Trials and Appeals Board (TTAB). As a part of the trademark registration process, every trademark must go through a thirty-day publication period before it becomes an official registration. During that period, any party which believes that it may be harmed by the registration may file an opposition. Some common grounds for filing an opposition proceeding are descriptiveness and confusing similarity with a pre-existing trademark. The time to oppose a registration can be extended upon written request.
When an opposition is filed, the owner of the application being opposed is provided with a “notice of opposition.” The applicant has thirty days to file a response to the notice of opposition, called an “answer.” The TTAB may dismiss an application either on motion or on its own if no answer is filed within thirty days.
The opposition process is much the same as litigation in a federal court. The parties engage in discovery, comprised of depositions, requests for production of documents, interrogatories, and requests for admission. Expert witnesses may be required to establish that the consuming public likely would be confused by the applicant’s trademark, were it allowed to register.
Trademark oppositions are costly to litigate. As a result, opposition proceedings often result in negotiated settlements or in outright defaults on the part of the applicant being opposed.
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