question.jpgIn Trademarks

What is an opposition proceeding?

If the Patent and Trademark Office grants a trademark application, it will issue a notice of publication to the applicant and the trademark will be published in the Official Gazette. The Official Gazette is a document published by the Patent and Trademark Office for the public, indicating what trademarks have been approved for registration. From the time the Official Gazette is published, members of the general public have a thirty day period to oppose the registration of any mark appearing in that issue. Anyone who believes they have stronger rights to the mark, or that there is a likelihood of confusion between the published mark and their own trademark, can initiate an opposition proceeding by filing a notice of opposition with the Trademark Trial and Appeal Board, which is a division of the PTO. An opposition must be initiated within thirty days of the Official Gazette publication date, unless you request an extension of time within that initial thirty day period.

An opposition proceeding is similar to a lawsuit, except all steps of the proceeding are done via paper filings and there are generally no actual appearances before the Board (as opposed to general lawsuits, where there are frequent appearances in court). During this opposition proceeding, the parties will conduct discovery (seeking information from the other side about the marks) and ultimately file trial briefs with the Board. At the end of the proceeding, the Board will make a determination as to the rights between the two parties. This entire process can take anywhere from one to several years.

If the Board grants the opposition, this means the opposed mark cannot be registered (because it has been successfully opposed). If the Board denies the opposition, however, the mark can move forward in the registration process.