Introduction: Why Trademark Oppositions Matter

When you apply to register your trademark with the United States Patent and Trademark Office (USPTO), you’re taking a bold step to secure your brand identity. However, after your mark is published in the Official Gazette, third parties have the opportunity to oppose your application. These oppositions are filed with the Trademark Trial and Appeal Board (TTAB), the administrative body responsible for deciding disputes over whether a mark should be registered.

For many entrepreneurs, receiving notice of an opposition can feel like a roadblock. But with the right strategy, you can overcome this challenge and continue protecting your brand.

Understanding the Basics of a Trademark Opposition

A trademark opposition is essentially a legal proceeding in which a third party usually the owner of an existing trademark argues that your application should not move forward to registration. Common grounds for opposition include:

• Likelihood of confusion: The opposing party claims your mark is too similar to theirs.

• Descriptiveness or genericness: The argument that your mark describes the goods/services or is too common to function as a trademark.

• Dilution: The claim that your mark weakens the distinctiveness of a famous brand.

• Fraud or bad faith: Allegations that your application included false information.

Importantly, the TTAB does not decide infringement or award damages. It only decides whether your trademark will proceed to registration .

Step One: Don’t Panic and Assess the Opposition

The first step is to carefully review the Notice of Opposition. This document outlines the opponent’s claims and legal grounds. Many oppositions are based on likelihood of confusion, but others may involve technical issues like non-use or descriptiveness.

Ask yourself:

• Who is opposing the application?

• What legal grounds are they relying on?

• Does the opposition appear strong, or is it speculative?

At this stage, it’s crucial to consult with experienced trademark counsel. A skilled attorney can help you evaluate whether the opposition has merit and recommend your best course of action .

Step Two: File a Timely Answer

After receiving the opposition, you generally have 40 days to file an answer with the TTAB. Your answer should admit or deny each allegation and may include affirmative defenses or counterclaims.

Failure to respond on time can result in a default judgment, meaning you automatically lose the case and your application is refused. This is why timeliness is critical. Think big with your brand, but stay disciplined about deadlines.

Step Three: Explore Settlement Options

Not every opposition needs to go through a full trial. In fact, many disputes settle before reaching that point. Settlement options may include:

• Coexistence agreements: Where both parties agree to use similar marks under certain conditions.

• Amendments to your application: Such as narrowing the scope of goods/services.

• Consent agreements: Where the opposing party consents to registration under specified terms.

Settlement discussions are often encouraged by the TTAB, and the Board may grant suspensions of proceedings to allow the parties time to negotiate .

Step Four: Engage in Discovery

If settlement isn’t possible, the case moves into discovery. This phase allows both parties to gather evidence. Discovery tools include:

• Interrogatories (written questions)

• Requests for documents

• Depositions of witnesses

Discovery is your chance to understand the strength of the opponent’s claims and prepare your defense. Effective discovery can also create leverage for settlement.

Step Five: Consider Filing Motions

Motions are an important part of TTAB practice. For example, you may file:

• Motion to dismiss: If the opposition fails to state a proper claim.

• Motion for summary judgment: If there are no genuine disputes of fact, you can seek a ruling in your favor without a full trial.

• Motion to compel discovery: If the opposing party fails to respond to requests.

Motions can save time and resources by narrowing or resolving issues early .

Step Six: Trial and Briefing

If the case proceeds, each side has the opportunity to present evidence during trial periods. Unlike in federal court, there are no live jury trials at the TTAB. Instead, evidence is submitted through written testimony, depositions, and exhibits.

After the evidence phase, both parties submit trial briefs that summarize their arguments. Finally, the TTAB may schedule oral arguments before a panel of judges.

Key Strategies for Responding to an Opposition

1. Stay Organized and Timely: Missing deadlines is one of the easiest ways to lose a case.

2. Focus on the Record: Only evidence properly submitted into the record will count. Exhibits attached to pleadings, for example, are not automatically part of the record .

3. Be Precise in Pleadings: Avoid overbroad defenses. A well-drafted answer sets the stage for a strong defense.

4. Leverage Settlement Where Possible: Negotiating an agreement can save both sides significant time and expense.

5. Think Long-Term: Even if you lose, you may still have options, such as rebranding strategically or appealing the TTAB’s decision to federal court.

Why Legal Counsel Matters

Responding to a trademark opposition is a highly technical process. The TTAB has strict rules of procedure, and small mistakes can have big consequences. Having an experienced trademark attorney is essential because:

• They know how to evaluate the strength of the opposition.

• They can navigate complex procedural rules.

• They understand settlement dynamics and negotiation strategies.

• They can present evidence and arguments in the most persuasive way.

Your brand is worth everything. Protecting it requires more than passion, it requires precision.

Conclusion: Protect Your Brand With Confidence

A trademark opposition can feel intimidating, but it’s not the end of your brand journey. With careful strategy, timely responses, and the right legal guidance, you can defend your application and move closer to securing the federal trademark protection your business deserves.

At Cohn Legal, PLLC, we help startups, entrepreneurs, and established companies navigate oppositions before the TTAB. We simplify the process so you can focus on growing your business.

Next Step:
If you’ve received a trademark opposition, don’t delay. Schedule a free consultation with Cohn Legal, PLLC today, and let’s discuss how to safeguard your brand with confidence.