What is a Notice of Opposition for Trademarks and How Does it Work?
A notice of opposition is a legal document that needs to be filed with a trademark office to stop a trademark application from being registered. This is usually as a result of likelihood of confusion with existing marks.
If you want to file a notice of opposition to stop someone’s trademark from being registered, you’ll have to follow some important steps.
Read the rest of this article to explore the following key aspects of a notice of opposition:
- The grounds for a valid notice of opposition.
- The steps to file a notice of opposition.
- What happens after filing.
- How to strengthen your claim.
- How a lawyer can help you with a notice of opposition.
- Where to find a reputable lawyer.
What Grounds are Required for a Notice of Opposition?
Opposing a trademark isn’t just about stating that a trademark should not be registered. You have to have valid grounds for opposing a trademark, backed by evidence. These grounds include the following:
- Similarity. This is a common reason why someone might file an opposition. It means that the trademark being applied for is too similar to a registered trademark, which is likely to cause confusion in the market.
- Lack of distinctiveness. If a trademark isn’t distinct enough, such as if it’s generic, it can be opposed.
If you want to oppose the filing of a trademark, you should provide evidence to support your claim, such as proof that your trademark is similar to the other party’s.
How Do You File a Notice of Opposition?
To file a notice of opposition, you’ll have to access the Trademark Trial and Appeal Board (TTAB) Center on the United States Patent and Trademark Office (USPTO) website.
Here are the steps to follow.
Open a New Submission
You must set up a MyUspto.gov account to access the TTAB Center. Once you’re in, choose the “New submission” option. You’ll have to provide details about the trademark application you want to oppose, such as a serial number or registration number.
- If the trademark is registered, you should include a registration or application number. This also applies if you have a common-law mark that’s depicted in a trademark application.
- If you own a common-law mark that isn’t depicted in an application, you’ll include an image of the mark, in JPEG format.
- If your common-law mark is made up of words without any designs, you can type it into the form.
Include a Proper Pleading
A proper pleading is a short statement of the claim you are making. It should include facts that establish you have a legal standing to oppose the trademark registration. It’s important to note that you don’t have to prove your claims at this stage. It’s enough to state them in good faith.
Submit it at the Right Time
You must file your notice of opposition within 30 days after publication of the application being opposed.
Pay a Fee
When submitting your notice of opposition, you’ll have to pay a fee. As of this time of writing, electronic submissions cost $600.
Select a Reason for the Opposition
You have to have a valid claim, with some popular reasons being:
- Likelihood of confusion with an existing trademark.
- Generic nature of the mark.
- No intent to use the trademark in commerce.
- Fraud during the trademark application process.
What Happens After Filing the Notice of Opposition?
After you submit a notice of opposition, the trademark applicant can file their response to it within 60 days. The submission will then move through various phases, which include:
- Discovery period. Both parties take depositions and request documents from each other.
- Trial period. Parties send testimonies and evidence to support their claims.
- Briefing. Parties send written briefs, and then a hearing might be requested.
- Final decision. The TTAB judges will consider both parties’ cases and evidence, before making a final decision.
How Do You Strengthen Your Opposition When Dealing with the TTAB?
There are various ways to strengthen your case when submitting a notice of opposition, such as by:
- Having at-hand copies of your applications and registrations, such as if you want to argue that another trademark is too similar to your registered mark.
- Showing evidence of use in commerce. This can include showing evidence of product labels and packaging.
- Explaining and proving the likelihood of confusion. This is when you show evidence that the trademark can cause confusion, such as if your customers have been misdirected to the other party’s website because of their trademark.
How Can a Lawyer Help You with a Notice of Opposition?
A lawyer is valuable to offer legal guidance through the process of filing a notice of opposition. Here is how they can help you:
- They’ll review the notice of opposition to check that it has a strong legal standing.
- They’ll ensure you meet all deadlines and filing requirements.
- They’ll gather supporting documents you require for the TTAB, knowing what will work best to strengthen your position.
- They’ll check for any weakness in your claims so that you don’t make mistakes that can prevent the registration from being stopped.
- They’ll ensure that all legal arguments are valid, aligned with laws, and relevant to your situation.
- They’ll protect your interests and rights throughout the process.
Where to Find a Lawyer for a Notice of Opposition
If you need to work with a reputable lawyer for a notice of opposition, you can find one on ContractsCounsel, one of the largest online legal marketplaces where clients connect with vetted lawyers.
By working with a trademark lawyer who is experienced in USPTO filings, you’ll have legal support throughout the process to minimize your risks.
You can also hire a lawyer online to review or draft a document you require for the process. To request this, all you have to do is follow these easy steps:
1. Go to the ContractsCounsel marketplace.
2. Post your request for free.
3. You’ll receive multiple bids from lawyers on the platform who can assist you.
4. Once you receive the lawyer bids, you should review the lawyers' profiles based on factors such as their location, client ratings, years of experience, and field of expertise.
5. Connect with a lawyer you think is best suited to your requirements and hire them.
