Guide
Trademark opposition: how it works and what to do
A trademark opposition is a challenge to an application after the USPTO approves it and before it registers. Anyone who believes the registration would harm them can file one with the Trademark Trial and Appeal Board (TTAB) within 30 days of publication, or longer with an extension. The fee is $600 per class. Only 34% of the applications opposed from 2015 to 2021 went on to register.
How an opposition works, step by step
- Publication. Once the examining attorney approves your application, it is published in the USPTO's Official Gazette. That opens a 30-day window for anyone to oppose.
- Extensions of time. Within those 30 days, a potential opposer can ask for more time: the first 30 days are free; 90 days, or a further 60, cost $200; a final 60 days costs $400 and needs your consent or extraordinary circumstances. The deadline can never go past 180 days from publication. You are told who asked.
- Notice of opposition. The opposer files it online, sets out its grounds and pays $600 for each class it opposes.
- The Board opens the case and sets a schedule. Your answer is due 40 days later.
- Discovery and trial. Both sides exchange evidence, then present it in writing; there is no courtroom. After briefs, the Board decides. A case fought to the end usually takes two to three years.
Most oppositions never get that far. They end because the applicant does not answer (a default judgment), the two sides settle, or one of them withdraws. If the opposition is sustained, registration is refused for the opposed goods and services; if it is dismissed, the application goes on to register.
If your application is opposed
- Do not ignore it. If you miss the 40-day answer deadline, the Board enters a default judgment and your application is refused. This is the most common way oppositions end.
- Read the grounds. Most oppositions claim likelihood of confusion with the opposer's earlier mark. Check how close the marks and the goods really are, and whether the opposer's mark is still in use.
- Talk to the opposer. Many cases settle: you narrow your list of goods or services, change the design, or sign a coexistence agreement setting out how both marks are used. The Board will usually suspend the case while you negotiate.
- Do not just abandon the application. Abandoning it without the opposer's written consent counts as a judgment against you, which can be held against a later application for the same mark. Settle first.
- Get a trademark attorney if you intend to defend. An opposition works like a small lawsuit, with deadlines, discovery and evidence rules.
Who opposes makes a big difference. Some brand owners oppose hundreds of applications: Monster Energy Company (795), Apple Inc. (473) and Caterpillar Inc. (350) since 2015, and among the 25 most active, the share of their targets that still registered ranges from 4% to 70%. The full list and the rates are in our research on who opposes U.S. trademarks.
If someone filed an extension of time against your application
An extension is an early warning: the party named in it is considering an opposition. Of the marks that drew one from 2015 to 2021, 47.4% were then opposed. It is often the cheapest moment to settle: contact them, find out what worries them, and offer a narrower description of goods or services before they spend $600 a class and you spend on a defense.
How to oppose someone else's application
- Watch for it. Applications are published weekly. A free brand watch emails you when a similar name or logo is filed, months before publication.
- Check you have grounds. The usual ones: likelihood of confusion with your earlier mark, which you must show you used or filed first; the mark is merely descriptive or generic; dilution of a famous mark; or, for an intent-to-use application, no genuine intent to use it.
- Act within 30 days of publication, or ask for an extension within those 30 days.
- File the notice of opposition through the TTAB's online system: $600 per class.
Two cheaper or later routes: before the application is published, anyone can send the examining attorney a letter of protest with evidence, such as a conflicting registration ($150). After a mark registers, the route is a petition to cancel ($600 per class).
Lower the chance of being opposed
Before you file, search for marks close to yours and look at who owns them: a similar mark held by a company that opposes often is a much bigger risk than one held by an owner who never enforces. The trademark availability check finds similar names, not just exact ones, and flags owners with a record of oppositions. More: how to check if a name is trademarked.
Questions
How long does a trademark opposition take?
The answer is due 40 days after the Board opens the case. Most oppositions end within months, by default, settlement or withdrawal. One fought all the way to a Board decision usually takes two to three years.
How much does it cost to oppose a trademark?
The USPTO fee is $600 per class opposed. Attorney fees are usually the larger part: a case fought to a Board decision costs many times the filing fee, while one settled early costs much less.
What happens if I do not answer an opposition?
The Board enters a default judgment and your application is refused for the opposed goods and services. A default is the most common way oppositions end.
Can I oppose a trademark after the 30 days?
Only if you asked for an extension of time within the 30 days; extensions can stretch the deadline to 180 days from publication. After that, you wait until the mark registers and file a petition to cancel it ($600 per class).
What is the difference between an opposition and a cancellation?
An opposition challenges an application after it is published and before it registers. A cancellation challenges a mark that is already registered. Both are heard by the Trademark Trial and Appeal Board.
Can I withdraw my application if it is opposed?
Yes, but if you abandon it without the opposer's written consent, the Board enters judgment against you, which can count against a later application for the same mark. Settling first usually avoids that.
General information, not legal advice. Opposition deadlines are strict and the procedure is technical; if you are defending or bringing one, a trademark attorney is worth it. Fees from the USPTO fee schedule, checked on the date above.