USPTO Trademark Oppositions

There are many reasons why an individual or business (whether a trademark registrant, a trademark applicant, or a party claiming trademark rights under common law) may seek to oppose a trademark registration.  The trademark opposition procedure allows anyone who may be damaged by the registration of a trademark to challenge the trademark application before it is officially registered with the United States Patent & Trademark Office (USPTO).  Generally, an individual or business filing a trademark opposition with the USPTO will assert one or more of the reasons listed below to oppose registration of the trademark.

Possible Grounds For Trademark Opposition

  • Applicant’s trademark so resembles a trademark registered in the USPTO as to likely cause confusion, or to cause mistake, or to deceive when used in connection with the identified goods and/or services;
  • Applicant’s mark is merely descriptive, or deceptively misdescriptive, or geographically descriptive, or geographically misdescriptive, or is primarily merely a surname when used in connection with the identified goods and/or services;
  • Applicant’s mark is geographically deceptive, or disparages members of a particular group, or the trademark consists of immoral, deceptive, or scandalous matter, or falsely suggests a connection with plaintiff’s name or identity;
  • Applicant has no bona fide use of the applied-for trademark in commerce prior to filing of the use based application for registration;
  • Applicant has no bona fide intent to use the applied-for trademark in commerce in connection with the identified goods and/or services;
  • Applicant’s applied-for trademark is merely a background design that does not function as a trademark separate and apart from the applied-for words in the trademark;
  • Applicant is not the rightful owner of the applied-for trademark;
  • Applicant’s applied-for trademark is merely ornamental;
  • Applicant’s applied-for trademark represents multiple marks in a single application (i.e., phantom mark);
  • Applicant’s applied-for trademark consists of the name of a particular living individual without the individual’s consent;
  • Applicant’s applied-for trademark is generic;
  • Applicant’s applied-for trademark would dilute the distinctive quality of plaintiff’s or opposer’s famous trademark;
  • Applicant applied-for trademark is used in a way to misrepresent the source of its goods and/or services;
  • Applicant’s applied-for trademark is the title to a single creative work and is not considered to be a registrable trademark;
  • Applicant misused the federal registration symbol ® prior to the applied-for trademark registration; and
  • Applicant’s applied-for trademark depicts the flag or coat of arms or other insignia of the United States, a State or municipality.

Note, the possible grounds to oppose a trademark registration listed above is not exhaustive. The most common reason for opposing a trademark is made on a likelihood of confusion basis. In other words, the plaintiff or opposer contends that the applicant’s applied-for trademark so resembles either: (1) plaintiff’s or opposer’s registered trademark; or (2) plaintiff’s or opposers prior common-law trademark or trade name, as to be likely to cause confusion when used on related goods and/or services.

A trademark opposition is filed with the USPTO during a defined window of time after a trademark application has been approved by a USPTO examining attorney and has been published in the Trademark Official Gazette (TOG) for opposition.  Note, only trademark applications to register on the Principal Register may be opposed.  The opposer is in the position of a plaintiff and the trademark applicant being opposed is in the position of the defendant.  If the USPTO sustains the opposition in favor of the plaintiff, then the USPTO will not allow the trademark application to mature into a full registration.  However, if the opposition is dismissed in favor of the defendant, then the USPTO will allow the trademark application to proceed to registration.

In order for a plaintiff to be successful in a trademark opposition proceeding, it must plead and prove two things: (1) that the plaintiff has standing to oppose – e.g. the plaintiff is likely to be damaged by the registration of the applicant’s trademark; and (2) that there are valid grounds why the applicant is not entitled  to register the trademark under the Trademark Act.  Note, the plaintiff or opposer has the burden to prove that the trademark applicant has no right to register its trademark.

Importance of Trademark Monitoring and Policing the Marketplace

Our attorneys are often asked the question – how do I know when someone is trying to register a trademark that may cause damage to my business or possibly infringe on my registered trademark?  There are generally two ways a trademark owner can identify applied-for trademarks that it may want to oppose.  First, a trademark owner can engage our law firm to provide periodic trademark monitoring services.  Our law firm offers every client the opportunity to set-up trademark monitoring programs whereby our attorneys will monitor all 50 state, federal, and US territories trademark databases periodically to ensure any identical or confusingly similar trademarks are identified and addressed appropriately. If potential conflicts or trademark infringement is identified, our attorneys can handle those issues through opposition (or cancellation) proceedings to prevent trademark dilution and infringement.

Second, the trademark owner may identify impending registrations by browsing the USPTO’s weekly Trademark Official Gazette (TOG or TMOG). Each week the USPTO publishes the Trademark Official Gazette; which contains a list of trademarks published for opposition.  Each trademark published for opposition will identify the trademark being registered, the goods and/or services described in the trademark application, and the date of alleged first use for use-based applications. If the trademark owner identifies a trademark that it would like to oppose, it will need to follow specific procedures and deadlines in order to properly oppose the registration of the trademark.

Trademark Opposition Filing Deadlines

As noted above, an individual or business that believes it will be damaged by the registration of an applied-for trademark may file a trademark opposition with the USPTO within 30 days from publication of the applied-for trademark in the Trademark Official Gazette.  In most situations, the 30 day opposition filing period is not enough time to properly evaluate the trademark to be opposed.  Therefore, the USPTO will provide one automatic 30 day extension of time on request without the need to show good cause.  Note, an additional 60 day extension (after the automatic first extension) may be granted only if good cause is shown.

Prior to the expiration of the 30 day opposition period, or any extension of time to oppose, a notice of opposition must be filed by the plaintiff or opposer.  The notice of opposition must allege facts tending to show why the opposer believes it would be damaged by the registration of the applied-for trademark and state specific grounds for the opposition.  Note, a showing of actual damage is not required in the opposer’s notice of opposition.