When you file a trademark application with the United States Patent and Trademark Office (USPTO), it undergoes examination by a Trademark Examining Attorney. If your application is approved for registration, it is first published in the Official Gazette. Once published, third parties have 30 days to oppose the registration if they believe your mark will harm their rights.

A Notice of Opposition is the formal document that starts the opposition proceeding at the Trademark Trial and Appeal Board (TTAB). The notice identifies the opposing party, explains their claims, and specifies the grounds for opposition. Common reasons include likelihood of confusion, descriptiveness, or prior use of a similar mark. Understanding the Notice of Opposition is the first critical step in defending your trademark and protecting your brand.

Immediate Steps to Take After Receiving a Notice of Opposition

Receiving a Notice of Opposition can be intimidating, but prompt action is essential. The first step is to carefully review the document and understand the claims being made. The notice will include the filing date and the deadline to respond. Typically, you have 60 days from the service date to file an Answer with the TTAB (see updated rule here).

Next, gather all documents, evidence, and information relevant to your trademark, including dates of first use, marketing materials, and records of sales. These materials will form the foundation of your response and help your attorney prepare a strong defense. Failing to respond on time can result in default judgment against your application, so it is critical to meet all deadlines and ensure your Answer is properly formatted and filed.

Understanding the Grounds for Opposition

Opposition proceedings are based on specific legal grounds. The most common ground is likelihood of confusion, which occurs when the opposing party believes that your mark is too similar to theirs and could mislead consumers. Other grounds include descriptiveness, genericness, dilution, and prior registration or use.

Understanding the basis for opposition helps you tailor your response and develop a strategy. You may be able to argue that your mark is distinctive, used in a different market, or not likely to confuse consumers. It is also important to analyze whether the opposing party has sufficient evidence to support their claims. Careful evaluation of the grounds for opposition can make a significant difference in the outcome of your TTAB proceeding.

Filing Your Answer to a TTAB Notice of Opposition

The Answer is your formal response to the Notice of Opposition. It must address each claim made by the opposing party, either admitting, denying, or stating that you lack sufficient information to respond. The Answer serves as the foundation of your defense and sets the stage for discovery and later phases of the proceeding.

Your Answer should be filed electronically through the TTAB Electronic System for Trademark Trials and Appeals (ESTTA). Filing requires strict compliance with TTAB rules, including proper captioning, formatting, and verification. In addition to responding to the claims, your Answer may include affirmative defenses that assert legal reasons why the opposition should fail. Working with a trademark attorney ensures that your Answer is accurate, strategic, and timely.

Discovery and Evidence Gathering in a TTAB Opposition

Once the Answer is filed, the TTAB sets a schedule for discovery, the process of exchanging evidence and information between parties. Discovery allows each side to request documents, interrogatories, and depositions to support their case. This phase is crucial because the evidence gathered will be used to prove or refute claims before trial.

During discovery, you should collect sales records, advertising examples, website screenshots, social media posts, and evidence of actual commercial use of your mark. Additionally, you can investigate the opposing party’s use of their mark and assess the strength of their claims. Strategic and thorough discovery can significantly improve your chances of success at the TTAB.

Motions and Trial in a TTAB Proceeding

After discovery, either party may file pre-trial motions, such as motions for summary judgment, to resolve the case without a full hearing. These motions argue that based on the undisputed facts, the opposition should be decided in favor of one party. Preparing a strong motion for summary judgment requires careful legal analysis and supporting evidence.

If the case proceeds to trial, it is conducted entirely on the written record and submitted evidence, and not in a courtroom. Parties submit trial briefs, evidence, and witness declarations to present their arguments. The TTAB then evaluates the record and issues a written decision. Understanding this process and adhering to procedural rules is essential to presenting a compelling case.

Strategies for Responding to an Opposition

Responding effectively to a TTAB Notice of Opposition requires both legal knowledge and strategic planning. First, you can evaluate whether a negotiated settlement is possible. In many cases, oppositions are resolved before trial through consent agreements or coexistence agreements.

If negotiation is not feasible, focus on developing a clear, evidence-based defense. Highlight your mark’s distinctiveness, market differences, or any prior rights you hold. Prepare all necessary documentation and witness statements carefully. Timing, organization, and adherence to TTAB rules are critical to strengthening your position and protecting your application's registration from being refused.

Why Work With a Trademark Attorney for TTAB Oppositions

TTAB opposition proceedings are litigation proceedings. They are complex, have strict deadlines and procedural rules. Mistakes in responding to a Notice of Opposition and/or filing your Answer can lead to dismissal or default judgment, jeopardizing your trademark registration.

A trademark attorney can guide you through each step, from evaluating the claims to drafting a strategic Answer, conducting discovery, and preparing for trial. At Kinhal Law PLLC, we help clients across the United States with all aspects of TTAB opposition proceedings. We help businesses defend their trademarks, protect their brands, and navigate complex USPTO rules effectively.

If your trademark application has received a Notice of Opposition, you do not need to face the process alone.

Book a free consultation today to learn how we can help you protect your brand before the TTAB.