In the United States, if the examining attorney has no grounds for rejection and finds that the trademark application is registerable, the application is then published for opposition in the Trademark Official Gazette. The publication process and opposition period allow third parties the opportunity to “oppose” the trademark application.
If a party believes that they will be harmed by the registration of the trademark application, the party can initiate a trademark opposition proceeding by filing a notice of opposition. The notice must set forth the grounds for opposing the trademark application, and a filing fee is required.
A trademark opposition is a formal proceeding held before the Trademark Trial and Appeal Board (TTAB). It is similar to a trial, but it is before the TTAB and not in a federal court. The record is in written form, and witnesses will not have to appear in court. The sole issue that is decided by the TTAB is whether the trademark application can be registered in view of the evidence and argument provided by the opposer. Issues such as infringement and right to use are reserved for the courts, and are not decided by the TTAB. A more detailed explanation of a trademark opposition proceeding is discussed here.
Regarding cost, a trademark opposition typically costs less than an action in federal court. However, the opposition can cost tens of thousands of dollars through discovery, and even more if the matter goes to the briefing stage.
The overall goal for an applicant is to have the trademark registered, whether that is by litigation or settlement. On the other hand, the goal for the opposer is to sustain the opposition. We advocate settlement where a certain result can be had without going through the expense of litigating the matter to its end.
Counsel for Esquire Trademarks have represented parties on both sides of an opposition proceeding. We have represented clients located in Pennsylvania, California, New York, and Manitoba Canada. Counsel have litigated against large multinationals for our clients. Esquire Trademarks has locations in Scranton, King of Prussia, Allentown, and Philadelphia.