Trademark Opposition Proceedings
A trademark opposition is a type of litigation proceeding that happens in the United States Patent & Trademark Office ("USPTO") between a party who has applied for registration of a mark (the "applicant") and a third party that believes registration of the mark will harm them (the "opposer"). There are similarities between a federal court lawsuit and a trademark opposition proceeding, but also significant differences. In this post, an overview of the trademark opposition proceeding is given.
If you need help with a trademark opposition proceeding, please request an appointment with attorney David M. Kleiman to discuss.
GROUNDS TO FILE A TRADEMARK OPPOSITION
A third party may file a notice of opposition against an application to register a trademark on one or more of several grounds. These include the grounds that the applied for registration is for a mark that is:
- Likely to cause confusion with the opposer’s preexisting registered mark or common law rights.
- Merely descriptive of the goods or services for which registration is sought.
- Primarily merely a surname.
- Geographically misdescriptive.
- Generic of the goods or services.
TIME TO FILE A TRADEMARK OPPOSITION
A third party that thinks it will be harmed by registration of a mark has thirty days from the day the mark is published by the USPTO to file an opposition. Extensions of time may be granted by the USPTO, extending the time to file a notice of opposition by up to six months.
TRADEMARK OPPOSITION PLEADINGS & INSTITUTION
The Opposer's Notice Of Opposition
An opposition is commenced by filing a notice of opposition, which gives notice to the applicant of the opposer’s basic factual and legal claims. A notice of opposition typically sets forth in numbered paragraphs the identifying information about the opposer and the opposer's allegations of standing and grounds for bringing the opposition. These factual allegations do not have to be supported by evidence at this stage. The fee charged to an opposer by the USPTO for filing an opposition is, at the time of this writing, $600 per class of goods or services.
The Notice Of Trademark Opposition Institution & Trial Order
After filing the notice of opposition, the USPTO (more specifically the Trademark Trial And Appeal Board ("TTAB")) sends a copy of the notice of opposition to the applicant and issues a notice of institution.
The notice of institution includes a trial order setting the opening and closing dates for the discovery period, assigning each party’s time for taking testimony, and the deadlines for the discovery conference and disclosures. The opening of discovery coincides with the deadline for the discovery conference. The date set for the close of discovery is 180 days after the opening of discovery.
The Applicant's Answer
The notice of institution sets a time for the applicant to file an answer to the notice of opposition, which must not be less than 30 days, and is typically 40 days 1.
In its answer the applicant is required to admit or deny the allegations in the notice of opposition. The applicant can also assert affirmative defenses, and file a counterclaim to cancel a registration pleaded by opposer. If filing a counterclaim the applicant must file a fee for each class in the opposer's registration it wishes to cancel. The fee charged by the USPTO for filing a counterclaim is, at the time of this writing, $600 per class.
The opposer will be required to file an answer to any counterclaim filed by the applicant. The TTAB will issue an amended notice of institution and trial order to accommodate the additional dates because the counterclaim (which is essentially a petition to cancel) will now be combined with the opposition proceeding, with the opposer and the applicant acting as plaintiff and defendant in the respective cases.
TRADEMARK OPPOSITION DISCOVERY
During the discovery period parties have access to legal tools for obtaining relevant information and things regarding any nonprivileged matter that is relevant to any party’s claim or defense and proportional to the needs of the case. The legal tools by which discoverable information can be obtained in an opposition proceeding include:
- Written interrogatories
- Requests for production of documents
- Depositions
- Requests for admissions
EVIDENCE FOR THE TRADEMARK OPPOSITION "TRIAL"
Unlike a federal court lawsuit, there is no courtroom trial that happens in an opposition proceeding (e.g., where witnesses show up at a courtroom to testify).
Rather, testimony is taken by deposition during a testimony period (as outlined in the trial order) out of the TTAB's presence. The written transcripts of these depositions and any exhibits from them are then submitted to the TTAB.
Certain specified types of evidence, including official records and printed publications, may, but need not be, introduced in connection with the testimony of a witness. Such evidence may instead be made of record by filing the materials with the TTAB under cover of a notice of reliance during the testimony period of the offering party.
Information and things filed with the TTAB during an opposition proceeding are kept in the possession of the TTAB. However, no information or material submitted will be considered by the TTAB as evidence in the case unless it has been introduced in evidence in accordance with the applicable rules.
By written agreement of the parties, the testimony of any witness or witnesses may be submitted as an affidavit by such witness or witnesses. The parties may also stipulate in writing the facts in the case, or what a particular witness would testify to if called, or that a party may use a discovery deposition as testimony.
The submission of evidence and testimony during the parties’ assigned testimony periods corresponds to the trial in court proceedings.
THE TRADEMARK OPPOSITION BRIEFS
After the close of all testimony periods in an opposition proceeding before the TTAB, the parties are allowed time in which to file briefs on the case. The brief is a party’s opportunity to present, in a systematic and coherent manner, and in a form which is permanent and can be referred to, a discussion of the facts in light of the law, its strongest affirmative arguments, and a rebuttal of its adversary’s arguments.
The main brief of the opposer is due not later than 60 days after the date set for the close of the rebuttal testimony period. If the opposer fails to file a main brief, the TTAB may issue an order allowing opposer until a set time, not less than 15 days, in which to show cause why its failure to file a main brief should not be treated as a concession of the case. If the opposer fails to file a response to the order, or files a response indicating that it has lost interest in the case, judgment may be entered against the opposer.
The filing of a brief on the case is optional, not mandatory, for the applicant. However, if the applicant wishes to file a brief on the case, the brief is due not later than 30 days after the due date of opposer's main brief. If the opposer wishes to file a reply to the applicant's brief, which is optional, the reply brief is due not later than 15 days after the due date of the applicant’s brief.
TRADEMARK OPPOSITION ORAL HEARING
The oral hearing on the case in an opposition proceeding before the TTAB corresponds to the oral summation in court proceedings after all the evidence is in. An oral hearing is optional and is scheduled only if a timely request is filed by a party to the proceeding, with the requisite fee. As of the time of this writing the USPTO fee for requesting an oral hearing is $500. In the vast majority of cases, an oral hearing is not requested.
The oral hearing provides a party with one last opportunity to emphasize its strongest arguments, and to refute its adversary’s arguments. It is particularly useful in cases with complex issues, a complex record, highly technical goods and/or services, or where the defendant needs to respond to arguments in the plaintiff’s reply brief. If neither party requests an oral hearing, the case will be decided on the evidence made of record during the testimony periods. The record and brief, therefore, are of paramount importance.
TRADEMARK OPPOSITION FINAL DECISION
After an oral hearing has been held in an opposition proceeding, the case is set down for final decision. If no oral hearing is requested, the case is set down for final decision after the due date for filing the last reply brief.
A panel of at least three Administrative Trademark Judges or other statutory members of the TTAB (collectively "judges") renders the final decision. Generally, every judge assigned to decide the case does not read the full evidentiary record in a case. Rather, one judge is assigned to read the testimony and examine the other evidence of record, discuss the case with the other judges, and then draft a decision and supporting opinion.
The draft is circulated to the other judges for their approval. A judge who does not agree with the decision may write a dissent. A judge who agrees with the decision, but disagrees with the reasoning expressed in the opinion supporting the decision, or wishes to express additional reasons, may write a concurring opinion.
When the judges rendering the decision have completed a final decision, a copy is sent to every party to the proceeding. All final decisions are posted on the USPTO website and are available for public viewing.
THE TRADEMARK OPPOSITION END RESULT
When an opposition proceeding ends with a judgment in favor of the applicant, the application returns to the status it had before the commencement of the proceeding. If the proceeding ends with a judgment that is adverse to the applicant, the application for registration will be refused.
Each party bears its own costs for the proceeding. The TTAB also does not award any monetary or injunctive relief. The sole issue for determination in an opposition proceeding is the eligibility of the applicant's mark for registration by the USPTO.
The losing party can appeal on the TTAB record to the U.S. Court of Appeals for the Federal Circuit; or it can request a new trial in a U.S. District Court. In the Federal Circuit, the party cannot introduce new evidence—the appeal is based on the closed record of the opposition proceeding. With a new trial in the U.S. District Court, there is an opportunity for the losing party to introduce additional evidence and present additional arguments. Furthermore, additional claims may be pleaded, including claims that the TTAB did not have jurisdiction to consider.
