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TRADEMARK OPPOSITIONS
Trademark Opposition Proceedings
Block Conflicting Registrations
When the USPTO publishes a potentially conflicting trademark for opposition, you have 30 days to protect your rights by filing a trademark opposition. Opposition proceedings before the Trademark Trial and Appeal Board (TTAB) prevent problematic marks from registering, preserving your exclusive trademark rights and preventing future marketplace confusion. Yomtobian Law P.C. represents trademark owners in opposition proceedings nationwide, leveraging extensive TTAB experience to block conflicting registrations. Attorney Alan Yomtobian provides strategic opposition counsel from initial evaluation through final TTAB decision.
What is a Trademark Opposition Proceeding?
A trademark opposition is a proceeding before the USPTO's Trademark Trial and Appeal Board challenging registration of a published trademark application. After the examining attorney approves an application, the USPTO publishes the mark in the Official Gazette for 30 days. During this publication period, anyone who believes they would be damaged by registration can file an opposition.
Oppositions are trial-like proceedings with pleadings, discovery, and briefing, but without live testimony. They're generally less expensive than federal court litigation while effectively preventing registration of problematic marks.
Grounds for Trademark Oppositions
Common grounds for opposing trademark registration include:
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Likelihood of Confusion - The published mark is confusingly similar to your mark
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Dilution - The mark dilutes your famous trademark
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Descriptiveness - The mark is merely descriptive or generic
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False Suggestion of Connection - The mark falsely suggests a connection with a person or institution
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Disparagement - The mark disparages persons, institutions, beliefs, or national symbols
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Fraud - The applicant made false statements in the application
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Priority - You have superior rights to the mark
Likelihood of confusion is by far the most common opposition ground. If the published mark is similar to yours and used on related goods/services, consumers may be confused about source or sponsorship.
Our Trademark Opposition Services
Yomtobian Law handles all aspects of trademark opposition proceedings:
Opposition Evaluation
When you identify a potentially conflicting published mark, we conduct a comprehensive analysis of opposition merits. We evaluate the similarity of marks, relatedness of goods/services, channels of trade, and other likelihood of confusion factors. We provide candid advice about your chances of success and the expected costs of opposition.
Notice of Opposition Preparation and Filing
If opposition is warranted, we prepare and file the Notice of Opposition within the 30-day deadline (or within an extension period if we've requested additional time). The Notice of Opposition sets forth the grounds for opposition and must be carefully drafted to properly frame the issues.
TTAB Proceedings Management
Opposition proceedings follow federal civil procedure rules with pleadings, discovery, and motion practice. We manage the entire proceeding:
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Answer Analysis - Reviewing the applicant's answer and planning strategy
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Discovery - Propounding discovery requests and responding to applicant's discovery
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Depositions - Taking depositions of applicant's witnesses
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Expert Witnesses - Retaining and preparing expert testimony when needed
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Motion Practice - Filing dispositive motions and responding to applicant's motions
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Trial Brief - Preparing comprehensive brief on the merits with evidence
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Oral Argument - Appearing for oral argument before the TTAB if requested
Settlement Negotiations
Many oppositions resolve through settlement before the TTAB issues a decision. We negotiate favorable settlements including withdrawal of the opposed application, amendments limiting the goods/services, coexistence agreements, or consent agreements allowing both marks to register under specific conditions.
Settlement and Coexistence Agreements
Many enforcement actions resolve through negotiated settlements rather than protracted litigation. Yomtobian Law negotiates favorable settlement terms including:
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Immediate cessation of infringing use
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Destruction or surrender of infringing materials
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Monetary compensation for past infringement
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Covenant not to use similar marks in the future
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Transfer of infringing domain names or social media accounts
In appropriate cases where coexistence is possible without consumer confusion, we negotiate coexistence agreements defining boundaries for both parties' trademark use.
The Opposition Timeline
Opposition proceedings typically take 12-24 months from filing to TTAB decision, though complex cases may extend longer. Key deadlines include:
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30 days - Deadline to file Notice of Opposition (extensions available)
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40 days - Applicant's answer deadline after service of opposition
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6 months - Standard discovery period
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30 days - Trial period for each party to submit evidence
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45 days - Briefing deadline after trial closes
Cost-Effective Brand Protection
Trademark opposition is often more cost-effective than federal court litigation. While oppositions require significant legal work, they avoid the expenses of federal court litigation such as jury trials and extensive motion practice. For many trademark owners, TTAB opposition is the most economical way to prevent a conflicting registration.
Defending Against Oppositions
Yomtobian Law also defends applicants whose marks face opposition. If your application has been opposed, we develop defense strategies to overcome the opposition and secure registration for your mark.
Don't Let Conflicting Marks Register
Once a conflicting mark registers, your enforcement options become more limited and expensive. Opposition allows you to stop the problem before registration grants enhanced rights to the applicant. Monitor the Official Gazette and act quickly when potentially conflicting marks publish.
Schedule Your Opposition Consultation
If you've identified a conflicting published trademark application, contact Yomtobian Law P.C. immediately. We'll evaluate opposition merits and, if warranted, file a Notice of Opposition to protect your trademark rights.
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