In the United States of America (USA), any individual or entity wishing to oppose a trademark can file a Notice of Opposition with the required fee within 30 days from the date the mark is published in the USPTO Trademark Gazette. The governing laws for opposition proceedings are outlined under sections §2.101 to §2.107 of the U.S. Trademark Law.
Opposition Procedure Overview
An opposition proceeding is similar to a federal court proceeding but is conducted before the Trademark Trial and Appeal Board (TTAB), an administrative tribunal within the USPTO.
- Notice of Opposition
All trademarks are published in the Official Gazette of the USPTO, which is released weekly. The Notice of Opposition must be filed within 30 days following the publication of the application or within any granted extension period. If the opposition is not filed within the specified time frame, even after extension, the mark will proceed toward registration.
Extension – The deadline to file notice of opposition can be extended by a period of either 30 days, which is granted upon request, or 90 days which is granted only in case of good cause. If an initial 30 days extension has been granted, another request can be filed for an additional 60 days , which is granted only for good cause.
- Response to the Notice of Opposition
Upon filing the opposition, the TTAB will issue a Scheduling Order that outlines the timeline for the proceedings leading to a decision on the merits. The applicant has 40 days from the date of the opposition notice to respond. Extensions for filing a response can only be granted by the TTAB.
If the applicant fails to respond, the TTAB will issue a Notice of Default, allowing the applicant 30 days to explain the lack of response. Failure to respond to the Notice of Default may result in a Default Judgment, which sustains the opposition and denies the registration of the application.
At this stage, the applicant may also file a counterclaim to cancel the registration pleaded by opposer. Since the counterclaim is a cancellation petition and will be combined with the opposition proceedings, the opposer will be required to file a response to the counterclaim and an amended institution order will be issued to incorporate the additional dates of counterclaim (cancellation petition).
- Discovery
The TTAB typically requires the parties to hold a Discovery Conference within 30 days after the applicant files their response to the notice. During this conference, the parties should discuss: • The merits of the claims and defenses in the opposition. • The potential for settling the opposition. • Arrangements to expedite or limit disclosures, pre-trial discovery, and evidence introduction at trial. A Board Interlocutory Attorney or Administrative Trademark Judge may participate in the conference upon request, which can be made after the answer but no later than ten days before the conference deadline.
- Pre-Trial Discovery
Discovery involves the exchange of witness lists and evidence that each party intends to rely on during the opposition proceeding. The TTAB typically allows six months for discovery. Types of discovery techniques under TTAB Rules include: • Initial Disclosures: Early exchanges of relevant information. • Interrogatories: Written questions regarding the issues and allegations, to be answered under oath. • Requests for Production: Written requests for documents and evidence pertinent to the opposition. • Requests to Admit: Written requests for acceptance or denial of specific allegations. • Written Depositions: Live examinations of witnesses, recorded by a stenographer, focusing on their knowledge of the facts and evidence. The request for discovery will not be approved until Initial Disclosures are served, and both Initial Disclosures and written discovery requests can be made simultaneously.
- Testimony
At this stage, evidence, witnesses and statements are submitted to the TTAB. The testimony phase lasts for 75 days. First, the opposer is required to submit evidence over a 30-day period. Thereafter, the application is required to submit its evidence over a 30-day period. Then the opposer is given 15 days to rebut the applicant’s testimony.
- Trial Phase (Briefs & Oral Hearing)
In this phase, the TTAB reviews the evidence and makes a ruling. After evidence submission, parties file trial briefs summarizing the evidence and legal arguments supporting their positions.
The opposer, being the party bringing the case, is responsible for submitting a brief on the case. The applicant may choose to file a brief or not. In case the applicant files a brief, the opposer may file a rebuttal or choose not to.
Oral hearings are held only when requested by a party and the non-requesting party is not required to attend the hearing. Further, a hearing is held only for summation of case and no new evidence can be introduced. If no party requests a hearing, the TTAB will decide based on the evidentiary record.
- TTAB Decision
After reviewing the evidence and arguments, the TTAB will issue a written decision either granting the opposition (thus refusing registration of the opposed application) or dismissing the opposition (allowing the application to proceed toward registration).
- Appeal
Decisions made by the TTAB can be appealed to a federal appellate court (the U.S. Court of Appeals for the Federal Circuit) or by initiating a new opposition proceeding in a U.S. federal trial court (District Court). If an appeal is filed with the Federal Appellate Court, the party cannot introduce new evidence since the appeal is based on the closed record compiled during the Board proceeding. However, if a new trail is filed with the U.S. District Court, additional evidence and arguments may be submitted and additional claims may be pleaded. This dual appellate procedure is a distinctive feature of U.S. opposition practice.
If a party loses in U.S. District Court, an appeal can be filed with the Supreme Court.