When a startup receives notice of a trademark opposition from the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB), it can feel overwhelming. For many entrepreneurs, the opposition process seems like uncharted territory filled with procedural deadlines, legal jargon, and the risk of losing a valuable brand name. However, understanding the process and implementing strategic defenses can make a critical difference. At Cohn Legal, PLLC, we help startups and business owners simplify this process, ensuring that their brand identity often their most valuable asset remains fully protected.

A trademark opposition typically arises when another party believes your applied-for mark could cause confusion with their existing trademark or otherwise violate their rights. This can occur for many reasons, such as similarity in names, logos, or the perception that your mark might dilute the distinctiveness of a famous brand. The good news is that with the right strategy, startups can often resolve oppositions favorably sometimes even without a full-blown trial.

Understanding the Opposition Process

The TTAB opposition process begins after your mark is published in the Official Gazette for a 30-day opposition period. During this time, any third party that believes your mark infringes on theirs may file a Notice of Opposition. Once filed, you will receive a notification, and the clock starts ticking. Typically, you have forty days to respond with an Answer to the opposition. Failing to respond on time can result in a default judgment, which automatically blocks your trademark registration.

This initial phase is critical. Your response must address the claims made by the opposer while preserving all possible defenses. At this stage, working with experienced trademark counsel can be invaluable. At Cohn Legal, PLLC, our attorneys focus on helping startups craft precise, well-reasoned Answers that not only respond but also position the case for a favorable outcome.

Evaluating the Opponent’s Claims

Before jumping into litigation mode, it’s important to evaluate the merits of the opposition. Is the opposer’s mark truly similar to yours? Do they have valid trademark rights? How strong is their evidence of consumer confusion?

Not every opposition is created equal. Some large companies use opposition proceedings as a routine tactic to intimidate smaller businesses from using names that pose no real threat. In such cases, a strategic legal response and negotiation may quickly resolve the matter without costly litigation. A careful analysis of the opposer’s claims can reveal weaknesses in their argument or even procedural missteps that may lead to early dismissal of the case.

Settlement and Negotiation Options

Many TTAB oppositions end in settlement, and this can be a smart path for startups looking to avoid the expense and uncertainty of a drawn-out legal battle. Settlement can take many forms, including coexistence agreements, where both parties agree to use their marks under specific conditions, or consent agreements, where one party permits the registration of the other’s mark under defined limitations.

At Cohn Legal, PLLC, we frequently negotiate on behalf of startups to reach pragmatic resolutions that protect business interests while avoiding unnecessary conflict. The key is to maintain open communication with the opposing party while safeguarding your brand’s integrity and future growth.

Crafting a Strong Legal Defense

If settlement is not possible, it’s time to prepare for the TTAB’s inter partes proceeding. A strong defense begins with a well-drafted Answer, denying unproven claims and asserting any affirmative defenses that apply. One of the most common defenses is challenging the opposer’s claim of likelihood of confusion. The TTAB evaluates several factors known as the DuPont factors to determine whether two marks are confusingly similar. These include the similarity of the marks, the relatedness of the goods or services, the trade channels, and the sophistication of consumers.

Startups can also argue that the opposer’s mark is weak or descriptive, that consumers are accustomed to distinguishing between similar marks in the same industry, or that there has been no actual confusion in the marketplace. The goal is to demonstrate that both marks can coexist without misleading consumers.

Managing the Discovery Phase

Once the pleadings are complete, the discovery process begins. This stage allows both parties to request information, documents, and admissions from each other. Discovery helps establish key facts and identify evidence that supports your defense. While it can be time-consuming, it’s a vital phase for uncovering inconsistencies in the opposer’s claims.

Discovery tools include interrogatories, requests for production of documents, depositions, and requests for admissions. For startups, it’s essential to respond promptly and thoroughly, as delays or incomplete responses can lead to sanctions or adverse rulings. The Board’s procedures, outlined in the Trademark Trial and Appeal Board Manual of Procedure (TBMP), emphasize the importance of cooperation, good faith, and adherence to deadlines.

Using Expert Testimony and Evidence

Depending on the complexity of your case, expert testimony may strengthen your defense. Experts can provide insights on consumer perception, market conditions, or linguistic analysis of mark similarity. In some cases, a well-prepared market survey can provide compelling evidence that consumers do not confuse your brand with that of the opposer.

Documentary evidence is equally important. Proof of your first use in commerce, marketing strategies, distinct branding elements, and evidence of customer recognition can all bolster your argument. Submitting this information in an organized and credible manner is critical to persuading the TTAB panel.

Leveraging Accelerated Case Resolution (ACR)

For startups seeking efficiency, the TTAB offers a process called Accelerated Case Resolution (ACR). ACR allows both parties to agree on stipulated facts and submit evidence in a streamlined manner, effectively speeding up the decision-making process while reducing costs. When appropriate, ACR can be an excellent alternative to full trial proceedings, providing quicker outcomes without sacrificing fairness.

The Value of Experienced Counsel

Trademark opposition proceedings are nuanced, procedural, and deadline-driven. Missing a single step can jeopardize your registration rights. That’s why having an experienced legal team your “legal consigliere” can make all the difference. Cohn Legal, PLLC’s attorneys have guided countless startups through TTAB oppositions, ensuring their filings are precise, their defenses are well-documented, and their brand remains strong throughout the process.

Startups often make the mistake of treating a TTAB opposition like a minor administrative matter. In reality, it’s a specialized litigation process that demands strategy and attention to detail. With proper representation, you can often turn an opposition into an opportunity clarifying your brand’s distinctiveness, strengthening your legal position, and building confidence in your intellectual property portfolio.

Protecting Your Brand Beyond the TTAB

Winning an opposition or resolving it successfully is only part of the journey. Trademark protection is ongoing, requiring vigilance against future conflicts. Once your mark is registered, it’s vital to monitor new filings in the USPTO database to ensure no other party attempts to register confusingly similar marks. Regular trademark maintenance filings, renewals, and international expansion strategies are also key to long-term protection.

At Cohn Legal, PLLC, we encourage startups to think big and plan globally from the beginning. With the right legal strategies, your trademark can become one of your company’s most valuable and enduring assets.

Your brand is everything. Facing a TTAB opposition doesn’t have to derail your vision. With sound legal strategy, clear communication, and dedicated counsel, you can navigate the process with confidence and come out stronger on the other side.

If your startup has received a notice of opposition or you’re anticipating one, don’t wait. Reach out to Cohn Legal, PLLC for a free consultation. Let’s simplify the process together and protect what you’ve built forever and always.