We defend trademark applications opposed at the TTAB.
A Notice of Opposition starts a proceeding before the USPTO’s Trademark Trial and Appeal Board. It comes with a hard deadline, and ignoring it can end your application. We file the answer and handle the case from there, whether it settles or goes to trial.
Starting at $2,495 to review the notice and file your answer
A trademark opposition is a challenge filed at the USPTO’s Trademark Trial and Appeal Board (TTAB) asking it to refuse your application after it is published. You must file an answer by the deadline the Board sets, generally 60 days from the date it sends the notice.
Without an answer, the Board can enter judgment by default and refuse your application. Most oppositions claim a likelihood of confusion with an existing mark, and many end in a negotiated outcome before trial.
What is a trademark opposition?
A trademark opposition is a formal challenge to your application, filed at the TTAB after your mark is published for opposition in the USPTO’s Trademark Official Gazette (TMOG). The opposer argues your mark shouldn’t register, usually because it’s likely to be confused with theirs.
Publication opens a 30-day window for anyone who believes they’d be harmed by your registration to oppose it. That window can be extended up to 180 days from publication.
An opposition is an administrative proceeding about registration only. The Board decides whether your mark gets on the federal register. It can’t award money damages or order you to stop using the name, because those claims belong in federal court, although the same facts can support both kinds of case.
How did the opposer find my trademark application?
Most brands that police their marks pay for watch services that scan the USPTO’s weekly Trademark Official Gazette (TMOG), where approved applications are published. Publication put your application in front of them.
An opposer who needs more time can first ask for 30 days, or 90 days with a reason, and then a final 60 days, up to 180 days from publication. Each request shows on your application’s record, so an extension is often the first sign an opposition is coming.
How long do I have to respond to a Notice of Opposition?
The Board sets the deadline in the notice it sends when the opposition is instituted, generally 60 days from that date. The parties can agree to extend it, and the Board may reset it in a later scheduling order.
The same order sets the whole schedule, including the answer, a required discovery conference, discovery, trial periods, and briefing. Missing the first date is the most common way applicants lose.
When a notice arrives, put the answer date on the calendar that day and get the file to a trademark attorney well before it.
What happens if I ignore a trademark opposition?
The Board can enter a default judgment against you and refuse your application without the opposer having to prove anything. Close to half of opposed applicants end up there.
In the TTAB prosecution histories analyzed so far, 44% of opposed applicants never filed an answer. An answer would have kept options such as a narrower registration or a coexistence deal on the table.
Default costs you the application and its filing date. Pursuing the mark after that means a new application, and the same opposer can oppose that one too.
Share of matters showing a default anywhere on the docket, from 16,106 prosecution histories parsed to date. Categories overlap. A default can later be set aside, and a matter can also show settlement activity.
Why do companies oppose trademark applications?
Likelihood of confusion is pleaded in 82.6% of oppositions. Dilution, abandonment, fraud, and non-use follow, and nearly half of challengers plead more than one ground.
| Ground | Share of filings |
|---|---|
| Priority and likelihood of confusion, §2(d) | 82.6% |
| Dilution by blurring, §43(c) | 21.2% |
| Abandonment | 14.6% |
| Fraud on the USPTO | 10.3% |
| No use in commerce when required, §1(a) | 9.3% |
| Dilution by tarnishment, §43(c) | 6.7% |
| False suggestion of a connection, §2(a) | 5.4% |
| No bona fide intent to use, §1(b) | 3.2% |
Dilution is only available to famous marks, so a dilution claim usually means you are facing a major brand. Non-use and no-bona-fide-intent claims target applicants who listed goods or services they don’t sell, a choice made in the application itself.
Oppositions and cancellations are also a way past an office action. When an examiner cites an earlier application or registration against yours, going back and forth with the USPTO isn’t always the best route. Opposing or cancelling the cited mark can remove the obstacle, and many abandonment, non-use and no-intent-to-use claims are filed for exactly that reason. See help with office actions.
What are my options after an opposition is filed?
You have four broad options. You can defend the application, negotiate a resolution, narrow or abandon it, or challenge the opposer’s own registration where there is a basis for that. The choice turns on how you use the mark and who is on the other side, and on what you are prepared to spend.
- Defend. File an answer and take the case through discovery and trial when the facts are on your side.
- Negotiate. Narrow your goods and services, agree how each mark will be used, or sign a coexistence agreement.
- Counterclaim. When the opposer’s registration is vulnerable, for example through non-use or abandonment, you may be able to seek its cancellation. Some counterclaims must be raised with your answer, so get advice before the deadline.
- Walk away deliberately. Sometimes the cheapest outcome is to abandon the application early and rebrand. Make that choice before the answer deadline passes.
Can a trademark opposition be settled?
Yes. Settlement activity appears on 43% of opposition dockets analyzed so far. Common terms include narrowing the goods or services, coexistence agreements, and phased rebrands.
On paper, a dismissal with prejudice at the TTAB reads as a loss for the opposer. It usually reflects a negotiated resolution, often one in which the applicant amended or abandoned the application. The negotiated terms set which goods you can still sell under the name, and sometimes where you can sell them.
43% is the share of matters with settlement activity anywhere on the docket, from 16,106 prosecution histories parsed to date. Not exclusive of defaults or answers.
What happens after I file my answer?
The case follows the schedule in the Board’s institution order, which sets a discovery conference, a discovery period, pretrial disclosures, testimony periods for each side, and written briefs. Oral hearings are optional.
Parties can ask the Board to suspend the schedule while they negotiate, and many do at some point. The Board applies its own rules and much of the Federal Rules of Civil Procedure, and it enforces discovery deadlines.
How long does a trademark opposition take?
Defaults and early settlements can wrap up in months. A fully contested case runs through discovery, trial periods, and briefing, and commonly takes well over a year.
The Board sets the schedule when the proceeding is instituted. Settlement talks can pause it, and a case ends whenever both sides agree on terms, which can happen at any stage.
How much does it cost to defend a trademark opposition?
Cost scales with how far the case goes. Answering and negotiating early costs a fraction of a case that runs through discovery and trial. We scope and quote after reviewing the notice.
The number of grounds pleaded, how much discovery the opposer wants, and whether there is a counterclaim all move the figure, as does an opposer that litigates as policy. We’ll tell you plainly when narrowing or rebranding makes more business sense than fighting for the mark.
What happens if I lose a trademark opposition?
Your application is refused. The Board’s decision doesn’t by itself stop you from using the name, but the opposer may treat the win as a reason to pursue an infringement claim.
You can appeal to the US Court of Appeals for the Federal Circuit, or bring a civil action in federal district court, within two months of the decision (15 U.S.C. §1071). Whether to keep using the name after a loss is a separate question about infringement risk.
Do I need a lawyer for a TTAB opposition?
US-based applicants may represent themselves, but TTAB cases follow federal rules of procedure and evidence, and a procedural misstep can decide a case. Applicants based outside the US must be represented by a US-licensed attorney.
Many opposers file through firms that run an ongoing watch program for their brand. For an application you filed yourself, see help for self-filed trademarks. For a business based outside the United States, see US counsel for foreign applicants.
How we handle an opposition.
Read the notice
We check the grounds pleaded, the opposer’s registrations, your deadline, and anything in your file that helps or hurts your position.
Pick the strategy
Defend, negotiate, narrow, or counterclaim. You get a straight read on risk and cost before you spend anything.
Answer and resolve
We file your answer on time, then negotiate or litigate toward the outcome that protects the business.
More questions.
Q01Have you handled oppositions against large companies?
Yes. Modern Mark has gone up against Google, Apple, Duke University and the University of Texas. Large brand owners run watch services and oppose often, so a well-prepared answer matters from the start.
Q02Can the TTAB award damages or make me stop using my mark?
No. The Board decides whether a mark can be registered. Claims for damages or to stop use are brought in federal court, which is a separate proceeding.
Q03What is the difference between an opposition and a cancellation?
An opposition challenges an application before it registers. A cancellation (a petition to cancel) challenges a mark that is already registered. Both are heard by the TTAB.
Q04Someone filed an extension of time to oppose my mark. What does that mean?
A third party is considering an opposition and has asked for more time to decide. Nothing has been filed against you yet. Use the time to assess your position and, in some cases, to open a conversation with the other side.
Q05Does an opposition mean I am infringing someone’s trademark?
Not by itself. An opposition is an allegation about registration and makes no finding of infringement. Get advice anyway, because the same facts can come up in an infringement claim.
Q06Will you tell me if it is not worth fighting?
Yes. Sometimes narrowing your application or rebranding early is the right business call, and we will say so.
Related help.
Trademark Registration
A clearance search and strategy before a USPTO filing that holds up.
Filed It Yourself?
Attorney help when a self-filed application gets an office action, refusal, abandonment, or opposition.
Foreign Applicants
USPTO rules require trademark applicants based outside the US to be represented by a US-licensed attorney.
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