A trademark Opposition is a challenge by another party to a USPTO application. An Opposition occurs when a company or an individual believes that its trademark rights would be harmed by the registration of an application pending at the USPTO, and they file to block it.
The most common basis for an Opposition is a likelihood of confusion between the Opposer’s trademark and the pending application. An opposition may be filed when a pending application receives preliminary approval from the USPTO and is published in the USPTO'S official records (“Official Gazette”).
In an Opposition proceeding based on an alleged likelihood of confusion, the opposer must establish that:
- its rights to the trademark predate those of the challenged applicant, and
- the Opposer’s trademark and the applicant's trademark are likely to be confused
Generally, the two main factors in determining whether two marks are likely to be confused are:
- similarity of the two names in sound, appearance and meaning, and
- similarity or relatedness of the goods and services when used in connection with the trademarks of the applicant and the opposer
Many Opposition proceedings are settled or resolved. But the cases can involve all the elements of litigation, including depositions and motions. Opposition proceedings are governed by the TTAB Manual of Procedure (TBMP), which is several hundred pages long and can be quite extensive in detail. Due to the nature of the legal correspondence and evidence required in the proceeding, the entire process can take two years or even longer. For all of these reasons, it is strongly recommended that a party in an Opposition matter—whether on the plaintiff's side or the defendant's side—use an experienced trademark attorney.
