Trademark opposition proceedings are internal proceedings conducted before the Trademark Trial and Appeals Board (“TTAB”), when a third party wishes to oppose a pending trademark application. For example, if you have filed a trademark application, (therefore you are called “applicant”), and your competitor finds out and wishes to oppose the issuance of your application, he may file an opposition during the appropriate window of time. An opposer, must file an opposition, during a thirty (30) day period following the Notice of Publication.
An opposition is similar to a trademark infringement lawsuit in many respects. except that much of the terminology is different. For example, a complaint called “Notice of Opposition” must be filed by the opposer, as well as an Answer by the applicant. The parties for the most part follow the Federal Rules of Civil Procedure (“FRCP”) as they would in a federal court litigation. The parties undergo discovery such as written discovery and depositions. But there are several differences as well, namely, there is no jury trial available. Instead the case is heard before the TTAB which is composed of a panel of judges in Alexandria, Virgina. Additionally, monetary damages or an injunction of use are not available remedies in an opposition proceeding. The only remedy available is an order preventing the applicant from getting his trademark issued.
Why is an opposition important? As you can imagine, obtaining a federal trademark registration is extremely important, because it will typically give the trademark holder nationwide protection of mark. Preventing a competitor or infringer from obtaining a federal registration can be critical the trademark holder’s rights.
Our firm has filed and defended hundred of trademark matters, particularly USPTO opposition and cancellation proceedings and other complex USPTO matters.