Trademark Opposition 101

By Charles H. Knull

What is an opposition or cancellation proceeding and what does it mean for your trademark strategy?

Opposition and cancellation proceedings are administrative trials held within the Trademark Trial and Appeal Board, which is a reviewing arm of the U.S. Patent and Trademark Office.  They are one of the ways that disputes between trademark owners can be resolved during the process of registering a U.S. trademark.

An opposition is an action brought against a “published application” by someone who doesn’t want the trademark to register (generally someone with a similar trademark).  When an application for trademark registration is filed, not only is the application reviewed by a Trademark Examiner at the USPTO, but also, if the application is approved, it is published in an issue of the weekly USPTO Official Gazette. Once published, anybody can file objections within 30 days.  Those objections can trigger an opposition proceeding.

A cancellation Proceeding is like an opposition, but it is brought against a Registered Trademark.  For example, sometimes, an applicant will find a registration blocking its application which, upon examination, is determined to be abandoned. The only way to clear the way is to file a cancellation and get the TTAB to cancel the abandoned registration.

These actions are a stripped down trial before the TTAB as judge (no jury), though many times they are handled entirely on paper without an actual oral argument in a courtroom.  Once a Notice of Opposition or Petition to Cancel is filed by the Opposer or the Petitioner (to Cancel), the TTAB issues an Order that establishes the schedule for the proceeding.  Similar to court cases, the dates set are rigid unless the parties can agree to reset them and the TTAB approves.  Generally, the only way to suspend or reset dates is to show legitimate mutual attempts are being made to settle the case without further litigation.

Filing either proceeding involves careful preliminary consideration of success. A rash filing can backfire and even result in a counter-lawsuit in Federal Court for trademark infringement.

Filing a proceeding, however, is much less expensive than going to Federal Court.  But, if filing  does not result in default, or suspension and settlement talks (a good proportion of them do), after about two months, legal fees and disbursements will mount up quickly as the dates set in the Order require various documents to be drafted and filed and for discovery to take place.   While these costs are much less than litigating in court, the costs must be considered from the initial decision.