Introduction: Why Trademark Opposition Matters

Your brand is your most valuable business asset. When another party applies for a trademark that looks, sounds, or feels confusingly similar to yours, it could dilute your brand identity and harm your business. Thankfully, U.S. trademark law provides a safeguard through the Trademark Trial and Appeal Board (TTAB), which allows trademark owners to oppose potentially conflicting applications.

The key tool for protecting your rights in this forum is the Notice of Opposition. This filing formally tells the TTAB that you object to the registration of another party’s mark. For startups, entrepreneurs, and established businesses alike, understanding how to properly file a Notice of Opposition can make the difference between protecting your brand and losing critical ground in the marketplace.

Step 1: Monitor the Official Gazette

The process begins with the USPTO’s Official Gazette, a weekly publication of trademarks that have been approved for registration. Once a mark is published, any third party has 30 days to file a Notice of Opposition or request an extension of time.

For businesses serious about brand protection, monitoring the Official Gazette is non-negotiable. This is your window to stop confusing or infringing marks before they achieve registration. Many companies rely on trademark watch services or their legal counsel to track these publications automatically.

Step 2: Determine Your Standing and Grounds for Opposition

Before filing, you must confirm that you have standing to oppose. This means you can demonstrate that you would likely be harmed by the registration of the contested mark. Typically, this is easy to show if you already own a similar registered or common law mark.

Next, you must identify the grounds for opposition. Some of the most common include:

  1. Likelihood of Confusion (Section 2(d)): The applied-for mark is confusingly similar to yours.

  2. Descriptiveness or Genericness (Section 2(e)): The mark is too descriptive or generic to function as a trademark.

  3. Dilution (Section 43(c)): The mark would blur or tarnish the distinctiveness of your famous mark.

  4. False Suggestion of Connection (Section 2(a)): The mark falsely suggests an association with you or your brand.

Crafting these grounds precisely is crucial, as the TTAB has a narrow scope of jurisdiction and will dismiss overly broad or irrelevant claims.

Step 3: File Through ESTTA

The USPTO requires that all TTAB filings be submitted electronically through the Electronic System for Trademark Trials and Appeals (ESTTA). This online portal allows you to:

  1. Select the correct form for a Notice of Opposition.

  2. Provide information about your existing rights and the grounds for opposition.

  3. Upload supporting documentation.

  4. Pay the filing fee (currently $600 per class opposed).

ESTTA is designed to streamline the process, but practitioners recommend filing early to avoid last-minute technical issues. Once submitted, ESTTA generates a tracking number, and your opposition becomes part of the TTAB docket.

Step 4: Serve the Notice of Opposition

Unlike some USPTO filings, the TTAB requires that you serve the Notice of Opposition directly on the applicant. This means sending a copy of your filing to the applicant or their attorney of record.

Acceptable methods of service include first-class mail, overnight courier, or electronic service (if agreed upon). Proof of service must be included with your filing, or the TTAB may treat your opposition as defective.

Step 5: Prepare for the Response and Discovery Phase

After your Notice of Opposition is filed and served, the applicant has 40 days to respond with an Answer. The Answer typically includes admissions, denials, and any affirmative defenses. In some cases, the applicant may also file a motion to dismiss.

If the case proceeds, the TTAB will set a schedule for discovery and trial. During discovery, both parties exchange documents, take depositions, and gather evidence to support their claims or defenses. Unlike federal court, the TTAB does not determine damages as its role is solely to decide whether the mark should register.

Step 6: Consider Settlement and Alternative Resolutions

Not every TTAB opposition goes to trial. In fact, many disputes are resolved through settlement. Parties often negotiate coexistence agreements, withdrawal of the application, or amendments to the scope of goods and services.

The TTAB also offers Accelerated Case Resolution (ACR), which allows the parties to agree on a streamlined process that can lead to a faster decision. This approach is particularly attractive for startups seeking a cost-effective resolution.

Step 7: Trial and Final Decision

If settlement isn’t reached, the case advances to the trial phase. Each party submits evidence and briefs, and may request an oral hearing before a panel of three TTAB judges.

The Board will ultimately decide whether the contested application should be refused registration. If you prevail, the opposed application will be blocked. If not, the mark will proceed to registration, though you may still have remedies in federal court if infringement occurs.

Why Legal Counsel Matters

While it is possible to file a Notice of Opposition on your own, TTAB proceedings involve complex rules of pleading, discovery, and evidence. Missteps such as failing to include proof of service, improperly pleading your claims, or missing deadlines can result in dismissal of your case.

An experienced trademark attorney can help you:

  1. Craft strong and specific grounds for opposition.

  2. Navigate procedural rules unique to TTAB practice.

  3. Maximize settlement opportunities to save time and money.

  4. Protect your brand from dilution, confusion, or loss of rights.

Your brand is everything, and protecting it requires precision. Filing a Notice of Opposition is often the first and most important step in safeguarding your intellectual property.

Conclusion

Filing a Notice of Opposition before the TTAB is more than a legal formality, it is a strategic move to secure your brand’s future. By monitoring the Official Gazette, understanding your grounds, using ESTTA effectively, and preparing for discovery and trial, you can position yourself for success in trademark disputes.

Whether you are a startup with a new product or an established brand expanding into new markets, the opposition process is one of the most powerful tools available to defend your trademark rights.

If you believe a recently published trademark could threaten your business, don’t wait until it’s too late. Take action quickly, and consider partnering with legal counsel who can guide you through each step.

Your brand deserves strong protection. The TTAB Notice of Opposition process is where that protection often begins.