When someone applies to register a trademark that conflicts with your existing mark, you can file an opposition to block registration. Opposition proceedings occur at the Trademark Trial and Appeal Board (TTAB) before the USPTO and allow brand owners to protect their rights. Understanding the opposition process helps you defend your marks or challenge conflicting applications.
What Is a Trademark Opposition?
A trademark opposition is a proceeding challenging whether an applied-for mark should be registered. Opposition doesn't cancel existing registrations—it prevents new ones. If successful, the application is refused; if unsuccessful, the mark proceeds to registration.
Oppositions are adversarial proceedings resembling lawsuits but conducted before the TTAB rather than federal courts.
Who Can File an Opposition?
Anyone who believes they would be damaged by registration can file an opposition. This includes owners of prior similar marks, owners of famous marks subject to dilution, and others with legitimate commercial interests.
You don't need a federal registration to oppose—common law trademark rights and pending applications can establish standing.
The Opposition Timeline
After the USPTO approves an application for publication, it appears in the Official Gazette. You have 30 days from publication to file an opposition or request an extension. Extensions of up to 180 days total are available.
Monitor the Gazette for conflicting applications. By the time a mark is published, you have limited time to act.
Grounds for Opposition
Common opposition grounds include likelihood of confusion with your prior mark (the most common ground), dilution of a famous mark, the applicant's lack of bona fide intent to use the mark, descriptiveness or genericness of the applied-for mark, geographic misdescriptiveness, and false suggestion of connection with a person or institution.
Likelihood of confusion is analyzed using factors including similarity of marks, similarity of goods/services, channels of trade, sophistication of consumers, and evidence of actual confusion.
Filing the Opposition
File a Notice of Opposition with the TTAB through the Electronic System for Trademark Trials and Appeals (ESTTA). The notice must identify the opposed application, the opposer's standing, and the grounds for opposition. You can file a short-form notice identifying grounds generally, then provide detailed allegations later.
Filing fees apply—currently several hundred dollars, varying by the number of classes involved.
The Opposition Proceeding
After filing, proceedings follow a structured schedule similar to litigation. Discovery (interrogatories, document requests, depositions) is limited to matters relevant to the opposition. The TTAB sets deadlines for discovery, trial periods, and briefing.
Evidence is submitted through testimony declarations during assigned trial periods rather than live courtroom proceedings. Written briefs argue how the evidence supports each party's position.
Settlement and Coexistence
Many oppositions settle before decision. Parties might negotiate coexistence agreements—terms under which both marks can exist without confusion, perhaps limiting geographic areas or product categories.
Consent agreements where the senior user permits registration (perhaps with limitations) can also resolve oppositions.
TTAB Decisions
The TTAB decides oppositions based on the written record—evidence submitted and legal briefs. If opposition succeeds, registration is refused. If it fails, the application proceeds to registration.
TTAB decisions can be appealed to the Federal Circuit or challenged through district court civil actions.
Costs and Strategic Considerations
Opposition proceedings can be expensive, with legal fees ranging from $25,000 to $100,000+ through decision. Evaluate the strength of your claim, the importance of blocking the registration, and settlement possibilities before committing to full proceedings.
Sometimes filing an opposition is strategic—even if you might not win, it signals you'll defend your rights and encourages negotiation.
Monitoring for Conflicts
Proactive trademark monitoring catches conflicting applications early. Watch services scan new applications and alert you to potential conflicts during the window for opposition. Acting during the publication period is far cheaper than challenging registered marks.
Getting Legal Help
Trademark attorneys handle TTAB proceedings regularly. They understand the procedural requirements, develop evidence effectively, and present persuasive arguments. Given the procedural complexity and strategic considerations, professional representation significantly improves outcomes.