When USPTO Examiners approve a trademark application, before being registered, the application is published on the Official Gazette of the USPTO for 30 days. During this period, any third party who claims that the mark should not be registered can file a Notice of Opposition and challenge the application. The notice triggers a trademark opposition proceeding before the Trademark Trial and Appeal Board “TTAB” where parties present their cases.
The proceeding involves brief filings, discovery, presentation of evidence (depositions & interrogatories) and a hearing (if requested but rare) phase. After this “trial-like” proceeding, the TTAB (with a panel comprised of 3 judges) will issue its decision and either accept the opposition (the application will fail) or reject the opposition. Therefore, with the trademark opposition proceeding, the TTAB does not award damages or any other monetary relief.
If you have an intention to oppose a pending trademark application or have received a notice from Trademark Trial and Appeal Board “TTAB” that your trademark application has been challenged, you should consult with a Trademark Trial and Appeal Board attorney regarding to your claims for opposing an application or defending against an opposition.
Aydiner Law provides legal assistance to its clients, who wants to file a Notice of Opposition or file an Answer to a Notice of Opposition before the TTAB. Please refer below for further information.
How to File a Notice of Opposition ?
In order for a trademark Notice of Opposition to have a chance to successfully oppose a trademark application, the party who files the notice must have a legitimate interest in filing the notice.
Moreover, the notice must be filed against a trademark during the 30 day period when the mark is published on the USPTO’s Official Gazette before being registered.
Among other grounds, a Notice of Opposition is usually filed based on the following grounds:
• The mark is confusingly similar (“likelihood of confusion” ground) to an existing trademark, which might confuse the target consumer as to the source of the goods or services,
• The mark is generic or merely descriptive, or
• The mark is desceptive.