What are the Steps in a Trademark Opposition Process?

How does a Trademark Opposition Begin? The first step in a trademark opposition is to file a Notice of Opposition during the Opposition Period or file for an extension of time to file a Notice of Opposition. If an extension of time is applied for, the Notice of Opposition must be filed within the given time frame by the original party that filed for the extension. The Notice of Opposition is the beginning of the Pleadings Stage which consists of:

The Notice of Opposition (the complaint) filed by the opposer;

The Answer and any affirmative defenses and/or counterclaims filed by the applicant; and

Any Answer to a counterclaim (if filed) filed by opposer.


What is in a Notice of Opposition? The Notice of Opposition sets out (usually in numbered paragraphs) identifying information about the opposer including its allegations for standing and grounds for opposition. Suggested format for Opposition from USPTO.


What is an Extension of Time to Oppose? Just as any person, whether natural or juristic who believes that he, she, or it would be damaged by the registration of a mark upon the Principal Register may, upon payment of the prescribed fee, file an opposition in the Office, stating the grounds therefor, within 30 days after the publication of the mark in the Official Gazette for purposes of opposition, also similarly, any person, whether natural or juristic, who believes that he, she, or it would be damaged by the registration of a mark upon the Principal Register may file a written request to extend the time for filing an opposition. The first request can be for 30 days with no reason necessary or 90 days for good cause or consent. If the first request was for 30 days, a second request for 60 days can be made for good cause or consent. Ninety (90) additional days for a maximum of 180 days may be obtained with consent or under extraordinary circumstances.














What if you miss the time limit to oppose or to file for an extension of time to oppose? Time limits for filing Notices of Opposition or Requests for Extensions of Time to Oppose are strictly enforced. The next option may be to file a petition to cancel, after the trademark registers. It takes about 3 months from the close of the opposition period (including extensions) until a registration issues if the case is not an Intent to Use case. It may take much longer for an Intent to Use case to mature to registration. Check the TM web site or status line to see if it has registered.


What does “Good Cause” mean when referring to an extension of time to oppose someone in a trademark opposition?

Circumstances that may constitute good cause include but are not limited to additional time to investigate claim, additional time to confer with counsel, additional time to settlement discussions, additional time to seek counsel applicant's consent to the extension, settlement negotiations between the parties, the filing of a letter of protest by the potential opposer, an amendment of the subject application, the filing of a petition to the Director from the grant or denial of a previous extension, extraordinary circumstances and civil litigation between the parties.

The ESTTA form includes radio buttons to click for several “good cause” reasons:


What is in an Answer to a Notice of Opposition?

In its answer the applicant is required to admit or deny the allegations in the Notice of Opposition. The applicant can also assert affirmative defenses. Affirmative defenses may include unclean hands, laches, estoppel, acquiescence, fraud, mistake, prior registration defense, prior judgment, or any other matter constituting an avoidance or affirmative defense.


What happens after the pleadings? Here is an example of a time scheduled steps with the pleadings (Notice of Opposition and Answer or Petition to Cancel and Answer) shaded.










































Someone else filed for an extension of time to oppose, does that mean that I have more time to oppose also? Not unless there is still time in the original Opposition Period for you to file your own extension of time. TBMP 206.01  An extension of time to oppose is a personal privilege which inures only to the benefit of the party to which it was granted and those in privity with that party. (A party cannot claim the benefit of an extension granted to another (unrelated) party. Cass Logistics Inc. v. McKesson Corp., 27 USPQ2d 1075, 1077 (TTAB 1993) )


Can I just tell the examiner who refused my application because of a likelihood of confusion with an already pending or registered mark that I was using the trademark before they were? A trademark examiner cannot take into account information that is outside of the realm of their duties and decide to exert the rights of someone new applying for a trademark over someone who is already registered or whose application was already pending. At the USPTO, only the Trademark Trial and Appeal Board (TTAB) can do this and only in an Opposition or Cancellation Proceeding at the proper stage of one of these proceedings. If you believe that there is no likelihood of confusion, you can argue this position in your answers to the office action and file an appeal to the TTAB within six months of the mailing date of the final refusal to register. The trademark examiner can suspend your application pending the outcome of an Opposition or Cancellation proceeding only if your application is still LIVE and not abandoned so the timing of the filing of the Notice of Opposition or Petition to Cancel may be very important. (The filing of the Notice of Opposition is always important as it can only take place during the Opposition Period or during an extension of time to file by the same party.)


Opposition or Court? An opposition proceeding is similar to a court proceeding in many respects except that it is filed with the Trademark Trial and Appeal Board (TTAB), an administrative tribunal of the USPTO. An Opposition with the TTAB is less expensive than a court proceeding. An opposition is based on a written record only (in most cases-oral hearings are rare but can be requested).  A court can decide registrability issues and other issues such as infringements while the TTAB can only decide registerability. Whether an Opposition or Court case is the best answer is something much more complex than an FAQ can answer!


What does ttabvue stand for? TTABVUE refers to the "Trademark Trial and Appeal Board Inquiry System," which is the electronic record of proceedings before the Board.


What does ESTTA stand for? ESTTA is an acronym for "Electronic System for Trademark Trials and Appeals." ESTTA is the system for filing papers electronically with the Board.


 Call NOT JUST PATENTS® Legal Services with more questions at 1-651-500-7590.  See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied and been refused.


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Call 1-651-500-7590 or email WP@NJP.legal for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Steps to a Patent    How to Patent An Invention

Should I Get A Trademark or Patent?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Patentability Evaluation

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Name Cease and Desist

Sample Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

State & Federal Trade Secret Laws

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Shop Rights  What is a Small or Micro Entity?

Patent Drawings

Opposition Pleadings    UDRP Elements    

Oppositions-The Underdog    Misc Changes to TTAB Rules 2017

How To Answer A Trademark Cease and Desist Letter

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Trademark Refusals    Does not Function as a Mark Refusals

Insurance Extension

How to Respond to Office Actions

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $224 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Patent search-New invention

Patent Search-Non-Obvious

Trademark Attorney for Overcoming Office Actions Functional Trademarks   How to Trademark     

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal


What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks Trademark2e.com  

Likelihood of Confusion 2d

Acquired Distinctiveness  2(f) or 2(f) in part

Merely Descriptive Trademarks  

Merely Descriptive Refusals

ID of Goods and Services see also Headings (list) of International Trademark Classes

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals   FilingforTrademark.com

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses


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Steps

from date of institution

number of days from last step

Date of institution of Notice of Opposition or Petition to Cancel

1/30/2017


Due date for an answer - 40 days from the date of the institution order. (Institution date plus 40 days.)

3/11/2017

40

Deadline for a disclosure/discovery/settlement conference - 30 days from the date the answer is due. (Institution date plus 70 days.)

4/10/2017

30

Discovery opens - 30 days after the date the answer is due.  (Institution date plus 70 days.)

4/10/2017

0

Deadline for making initial disclosures - 30 days from the opening of the discovery period. (Institution date plus 100 days.)

5/10/2017

30

Deadline for disclosure of expert testimony - 30 days prior to close of discovery. (Institution date plus 220 days.)

9/7/2017

120

Discovery closes - 180 days from the opening date of the discovery period. (Institution date plus 250 days.)

10/7/2017

30

Deadline for plaintiff's pretrial disclosures - 15 days prior to the opening of plaintiff's testimony period.  (Institution date plus 295 days.)

11/21/2017

45

Plaintiff's 30-day testimony period - closes 90 days after the close of discovery. (Institution date plus 340 days.)

1/5/2018

45

Deadline for defendant's pretrial disclosures - 15 days prior to the opening of defendant's testimony period. (Institution date plus 355 days.)

1/20/2018

15

Defendant's 30-day testimony period - closes 60 days after the close of plaintiff's testimony period.  (Institution date plus 400 days.)

3/6/2018

45

Deadline for plaintiff's rebuttal pretrial disclosures - 15 days prior to the opening of plaintiff's rebuttal testimony period. (Institution date plus 415 days.)

3/21/2018

15

Plaintiff's 15-day rebuttal testimony period - closes 45 days from close of defendant's testimony period. (Institution date plus 445 days.)

4/20/2018

30

Plaintiff's Main Brief-60 days from close of the rebuttal testimony period

6/19/2018

60

Defendant's Main Brief-30 days from due date of the plaintiff's main brief

7/19/2018

30

Plaintiff's Rebuttal Brief-15 days from due date of the defendant's main brief

8/3/2018

15