Oppose A TM

Petitions to oppose or cancel a trademark are governed by the Trademark Trial and Appeal Board (TTAB). This Board manages all disputes and is the ultimate trier of fact and law, which means the Board determines the outcome of the dispute.

Only after a trademark application is published in the Principal Register may a third person who has an interest in the prospective mark registration file a petition to oppose or cancel the trademark application.

The difference between a petition to oppose and a petition to cancel are important. If a party wants to file a petition against a pending trademark application, they should file an Opposition. A party who wants to petition against a registered trademark should file a Petition to Cancel.

As stated, a third party only has the period of time that the mark is published to actually oppose the application. If a party needs additional time to file a petition, they may ask the Board for either a thirty (30) day or ninety (90) day extension.

An extension of thirty (30) days is automatically granted upon request. However, an extension of ninety (90) days is granted upon a showing of good cause. Good cause may mean that you need more time to research your claims against the trademark, you need more time to confer with counsel, you are involved in settlement negotiations and need more time to determine whether a claim will need to be filed, or you need more time to obtain counsel.

The TTAB prefers that parties file papers on their electronic database, which can be accessed at USPTO.gov. Although the papers are to be filed electronically, the Board does require that the filing party send the opposing party a copy of the filed paper via First Class or Certified Mail, unless the parties agree to accept service of the papers electronically. Either way, the filing party must certify to the Board how and when they served the paper to the opposing party to ensure it was received.

Filing a Petition to Oppose or Cancel an application may be done pro se, meaning that it may be done without the assistance of an attorney. However, it is always best, as with most other legal matters with great consequences, to at the very least consult with an attorney before filing an any papers.

The process to oppose or cancel an application is very time consuming and detailed. Essentially, the Board first requires the “Opposer”, who is likened to the “Plaintiff”, to file a Petition, which must contain certain statutory pleading requirements.  The statutory requirements of a Petition are:

  1. That the Opposer must affirmatively assert that it has standing, which means that the Opposer believes that it would be damaged by the registration of the mark in some way. This could be established simply by showing that it is a member of the general public;
  2. That it has a real interest in the outcome of the application, which means that it has a direct and personal stake in the outcome of the application; and
  3. That it has a statutory reason to oppose or cancel the trademark application. There are many different statutory reasons for opposing a trademark application and they are all encompassed in 15 U.S.C. § 1052.

After a Petition is filed, the “Trademark Applicant”, who is likened to a “Defendant”, must file an Answer within at least thirty (30) days. The Board may allot more time to the Applicant to file an Answer, depending on the circumstances.

After the Answer is filed, the Board will determine the trial schedule. The trial schedule will outline when the discovery period will begin and end and when the actual trial will occur. The unique part about Trademark Trials is that they are conducted entirely on paper, which means that all testimony is given in the presence of a court reporter and the transcript is submitted to the Board to review as one big picture after the trial period closes. The entire trial schedule takes approximately a year and half.

At any point in the Trademark Trial, the parties may attempt to negotiate a settlement. If settlement is achieved, the filing party should let the Board know by filing a withdrawal of its claim. A settlement may consist of limiting the scope of the goods or services associated with the mark or changing the mark name or design itself. Settlement is encouraged by the Board because it preserves finances and time and protects the interests of all of the parties.

At the close of the entire process, the Board will issue a decision and an opinion. If a party does not accept the decision it may appeal the decision to the Board.