Trademark Opposition

An opposition is a proceeding conducted before the Trademark Trial and Appeal Board (“the Board”) pursuant to Section 13 of the Lanham Act to determine whether grant of a published trademark or service mark application would be likely to cause damage to any other person.  The opposition is initiated by filing a Notice of Opposition with the Board after publication of the application, and payment of the associated fee.  The opposition may be based upon any number of grounds, and typically is based upon prior use by the opposer of the same mark for the same or related goods, or prior use of a similar mark. 

An opposition is administrative litigation.  The Board will issue a trial schedule with deadlines for discovery, introduction of trial testimony, and filing of trial briefs.  Frequently the opposition concludes with oral argument before the Board at its offices in Alexandria, Virginia.  Unlike typical litigation in federal court, the trial testimony is introduced through deposition as the Board does not hear live testimony.  Testimony may also be introduced by affidavit, stipulation and a notice of reliance, which is a mechanism to introduce typically documentary evidence.

After all briefing has been completed and oral argument held, the Board will issue a decision in which it will decide whether the allowed application may be granted as a registration.  The losing party has the right to appeal the Board’s decision to the courts, frequently to the Federal Circuit Court of Appeals. 

No published application can be granted as a registration while an opposition is pending. While the Board frequently sets a schedule setting a trial in the opposition approximately two (2) years after filing, the opposition frequently will take longer to reach conclusion.  Frequently the applicant and the opposer will reach an amicable resolution of the matter, thus avoiding the need for the costs and delays attributable to the opposition. 

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