An opposition is a proceeding, permitted in many trademark jurisdictions, wherein a party wishes to stop an imminent application for a mark from being given registration. Even though the particular reasons for bringing an opposition differ by jurisdiction, a party that thinks it will be damaged by an ensuing registration might oppose an application for that mark.
Under the Lanham Act, any party who might be damaged by the real or future trademark registration is allowed to dispute the registration. If the trademark has been published for future registration on the Principal Register, the party—typically a competing trademark’s owner—can dispute the registration.
The opposition procedure needs an opposing party to state why they think that they will be damaged by the trademark registration. The opposition must be in writing and filed within thirty days of the future trademark’s publication in the Official Gazette. The USPTO might permit extensions of the thirty-day period upon written request.
Under the Madrid Protocol rules, if a party wishes to oppose a trademark registration, the filing period for an opposition cannot be continued at least 180 days from the date that the application was published. Those delays must be now asked for in one of two methods. A party opposing registration can, after the initial thirty-day period, ask for either:
- A thirty-day delay (permitted upon request), after that a second request for an additional sixty-day delay (upon a display of good cause), after that an ultimate sixty-day delay (upon the applicant’s condition or written consent), or
- A ninety-day delay (upon a display of good cause), after that an ultimate additional sixty-day delay (upon the applicant’s condition or written consent).
A party who expects to oppose a Section 1 or 44 trademark application can do so electronically or on paper. An opposition to a Section 66 application (an application under the Madrid Protocol must be filed electronically.
When the trademark is opposed, the Trademark Trial and Appeal Board must allow the registering party at least thirty days, usually forty, to file an answer. It also establishes the time period for discovery. Depositions, interrogatories, and requests for document production must be made prior to the end of the discovery time period established by the Trademark Trial and Appeal Board. Responses to interrogatories and requests for document production must be made within thirty days of obtaining the request from the opposing party. These times can be continued on condition by either of the parties, or motion to the Board or by order of the Board.
The discovery phase lasts 180 days. When an opposition is filed, the applicant is presented a notice of the opposition. Both the Federal Rules of Civil Procedure and the Trademark Trial and Appeal Board’s own procedural rules preside over hearings. However, unlike a standard civil trial, there are usually no oral hearings and everything is normally conducted in writing. Once both parties have presented their cases, the Opposition Board will release their decision on the case’s merits. In the U.S., the USPTO cannot direct a mark’s use or award lawyers’ fees or costs.