What Is a TTAB Opposition Proceeding?

A TTAB opposition proceeding occurs when a third party opposes the registration of a trademark that has been published in the Official Gazette. The opposing party, known as the opposer, believes that registering the mark will harm their rights or cause confusion in the marketplace.

Once the opposition is filed, the Trademark Trial and Appeal Board (TTAB) oversees a structured process similar to a court proceeding. The applicant is given the opportunity to respond to the Notice of Opposition, submit evidence, and present legal arguments. Understanding the overall proceeding is the first step to developing a strong defense. Proper planning and timely action are essential because missing deadlines or submitting incomplete responses can result in default judgments or loss of rights.

Filing an Answer and Admitting or Denying Claims

The first defense in a TTAB opposition is the Answer to the Notice of Opposition. The Answer must respond to each allegation made by the opposer, either admitting, denying, or stating that you lack sufficient knowledge to respond.

A carefully drafted Answer allows the applicant to assert affirmative defenses, which are legal reasons why the opposition should be dismissed even if the allegations are true. Examples include arguing that the opposer has no valid rights in their mark, that the marks are not confusingly similar, or that the opposer failed to properly monitor their mark. Timely filing and strategic wording of the Answer sets the foundation for a successful defense in the TTAB proceeding.

Common Defenses Based on Lack of Likelihood of Confusion

One of the most frequently used defenses in TTAB opposition proceedings is that there is no likelihood of confusion between the marks. This defense relies on factors such as differences in sound, appearance, meaning, and overall commercial impression of the marks.

Additional considerations include differences in the channels of trade, target consumers, and geographic markets. For example, if the applicant and opposer operate in entirely separate industries, it may be difficult to show that consumers would be confused about the source of goods or services. Presenting evidence, such as survey results, advertising materials, and market studies, can support the claim that the marks are sufficiently distinct.

Defenses Based on Weak or Abandoned Opposer Rights

Another common defense asserts that the opposer does not have valid rights to the mark or has abandoned them. A mark may be considered abandoned if the opposer has stopped using it in commerce for a significant period without intent to resume use.

Challenging the opposer’s rights can include showing that the mark is generic, descriptive without secondary meaning, or not properly maintained through registration renewals. Proving lack of use or ownership weakens the opposer’s position and can be an effective way to protect your trademark. This defense often requires careful research of the opposer’s history and publicly available documents related to their mark.

Defenses Based on Prior Use or Priority

An applicant may also defend against a TTAB opposition by demonstrating prior use or priority. This defense shows that the applicant has used the mark in commerce before the opposer or that the applicant’s rights predate the opposer’s claimed rights.

Evidence of prior use may include sales records, product packaging, advertising, website screenshots, and other documentation showing consistent use of the mark in commerce. Establishing priority strengthens the applicant’s claim and can counter the opposer’s argument that registration would infringe on their rights. Maintaining accurate records of first use is essential to support this defense effectively.

Other Defenses: Consent, Coexistence, and Laches

Additional defenses in TTAB opposition proceedings may include consent agreements, coexistence agreements, and laches. Consent agreements occur when the opposer has previously agreed in writing to allow the applicant to use the mark under certain conditions. Coexistence agreements outline how two parties can operate without creating confusion in the marketplace.

The defense of laches applies if the opposer delayed unreasonably in filing the opposition, causing prejudice to the applicant. These defenses often require careful negotiation, documentation, and strategic presentation before the TTAB. Using these defenses can prevent unnecessary litigation and help preserve the applicant’s rights to register their mark.

Preparing Evidence and Discovery

After the Answer is filed, TTAB proceedings enter the discovery phase, where both parties exchange information and evidence. Gathering strong evidence is critical to supporting your defenses.

Evidence may include documents, emails, advertisements, social media posts, product samples, and witness declarations. This documentation demonstrates actual use, priority, distinctiveness, or lack of consumer confusion between marks. Working with an experienced trademark attorney ensures that all discovery requests are properly handled, evidence is organized, and deadlines are met. Proper preparation during this phase can significantly impact the outcome of the TTAB opposition.

How Kinhal Law Can Help

Navigating a TTAB opposition proceeding requires careful strategy, attention to deadlines, and a deep understanding of trademark law. Mistakes in responding to a Notice of Opposition, handling discovery, or presenting defenses can put your trademark application at risk.

At Kinhal Law PLLC, we guide clients through every step of a TTAB opposition. We help you identify the strongest defenses, gather the right evidence, and draft responses that clearly protect your brand. Our team works closely with you to ensure deadlines are met and all procedural requirements are satisfied, giving you confidence that your trademark rights are fully defended.

If your trademark application is facing a TTAB opposition, you do not need to navigate the process alone.

Book a free consultation today to learn how we can help you protect your brand and respond effectively to opposition claims.