TTAB Opposition Proceeding

To secure the registration of your trademark application, you will need to engage in a process known as an opposition proceeding. This critical step is necessitated by the existence of another party using a trademark that is identical or similar to yours and has filed their trademark application before you, leading to confusion. Even if you were the first to use the trademark, the chronological filing of applications plays a significant role in the USPTO's decision-making process. However, your earlier use of the trademark grants you priority of use, affording you certain rights under common law. To advance your application to registration successfully, it's essential to challenge the prior-filed application(s) through an opposition proceeding, ensuring your trademark rights are upheld and your path to registration is clear.

What happens if you do not engage in the opposition proceeding?
Skipping the opposition proceeding when you have a prior claim to a trademark can lead to severe consequences for your application and overall brand. Without contesting, your application risks being refused, denying you the opportunity to register your trademark officially. This inaction could strengthen the opposing party's claim to the trademark, potentially granting them the rights to use your chosen brand name or logo. Over time, this could be seen as relinquishing your claims to the trademark, even if you were its first user. As a result, you might find yourself facing a lawsuit for trademark infringement from the very entity you failed to oppose, leading to costly legal battles or even the necessity to rebrand. Taking timely action through an opposition proceeding is thus crucial for asserting your rights and avoiding the irony of being sued for using your own trademark.

What is a USPTO TTAB Opposition Proceeding?

A USPTO Trademark Trial and Appeal Board (TTAB) opposition proceeding is a formal challenge against the registration of a trademark application filed by another party. Conducted before the TTAB, this process allows parties to argue why a trademark should not be registered due to potential harm or conflict with their own trademark rights. Oppositions are a pivotal part of ensuring that only trademarks that do not infringe on existing rights or cause confusion in the marketplace are registered.

The Importance of Engaging in an Opposition Proceeding

The principle of priority of use is a cornerstone of trademark law, indicating that the first entity to use a trademark in commerce holds the primary right to its registration and use for related goods and services. By initiating an opposition proceeding, you can contest an application that infringes on your rights based on earlier use, thereby protecting your trademark and preventing marketplace confusion.

Steps in the TTAB Opposition Proceeding Process

  1. Filing the Notice of Opposition: The process begins with filing a notice of opposition against the trademark application you believe conflicts with your rights.
  2. Respondent’s Answer: The applicant of the opposed trademark must then file an answer, defending their application and addressing the claims made in the opposition.
  3. Discovery Phase: Both parties enter a discovery phase, similar to litigation, allowing for the exchange of documents, submission of interrogatories, and depositions to collect evidence.
  4. Trial Phase: The opposition moves into a trial phase, where evidence and testimonies are presented to the TTAB through written submissions.
  5. Final Decision: The TTAB reviews all evidence and arguments before making a decision. If the opposition is successful, the application being opposed may be refused registration. Decisions can be appealed to federal court.

Legal Nature of TTAB Opposition Proceedings

Although they occur outside of a traditional courtroom, TTAB opposition proceedings closely resemble litigation, involving structured pleadings, discovery, and evidence presentation. Legal representation is highly advisable to navigate the complexities of trademark law and effectively argue your case.

Conclusion

TTAB opposition proceedings are essential for moving your trademark application to registration and protecting your trademark rights.

What's Next 
The retainer for the opposition proceeding is $5,000.  To get started you will need to complete the form below to submit your payment and then schedule your call  with the attorney to discuss the cancellation proceeding strategy.