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Protecting a Trademark





Opposing a Trademark Application


Updated, March 2016


1. What is opposition?

Opposition is a legal proceeding, available in most jurisdictions, in which a party seeks to prevent a pending application for a mark from being granted registration. Although the specific grounds for bringing an opposition vary by jurisdiction, typically, a party that believes it will be damaged by the resulting registration may oppose an application for that mark. Often, the opposition procedure is triggered by official publication of an application in its pre-grant stage in a government journal, gazette or bulletin, either in print or online. Local opposition rules establish an opposition period, usually ranging from one to three months after publication, in which a party’s opposition must be formally entered. In a minority of jurisdictions, the opposition period occurs after the issuance of a registration; this is also known as post-grant opposition. In some jurisdictions, however, no opposition is available, and cancellation after registration is an opponent’s only option. A formal decision to uphold or dismiss the opposition, thereby refusing or granting the registration, usually is issued in writing. Settlement agreements, involving amendment of the goods or services of the opposed application, withdrawal of the opposition and restrictions on use of the mark, are commonplace; in such cases there is no decision on the opposition. Typically, the losing party in an opposition proceeding can appeal an adverse decision to a higher authority within the trademark office or registry or to a court.

2. On what grounds can a party bring an opposition?

An opponent (the plaintiff) can raise either absolute or relative grounds in an opposition proceeding. Under absolute grounds, the opponent can claim one or more of the grounds listed below. Alternatively, under relative grounds, the opponent makes a claim of prior rights in the trademark, examples of which are listed below.

The most frequently raised grounds for opposition are as follows:

Absolute Grounds Relative Grounds 
Descriptiveness; Geographically deceptive misdescriptiveness Priority; Likelihood of confusion
Genericness; Functionality Bad faith
Bad faith; Fraud Business name/domain name/trade name use
  Well-known/famous mark

Most jurisdictions provide similar grounds for opposition; however, there are some important exceptions.

3. What are common defenses to an opposition?

Priority of use and no likelihood of confusion are common defenses to an opposition based on likelihood of confusion. Defenses to an opposition based on another ground depend on the evidence submitted by the parties and the law of the applicable tribunal. Equitable defenses, such as laches, estoppel and acquiescence, may be available in some jurisdictions. In the United States, such defenses are available, but they may have limited value because the United States Patent and Trademark Office (USPTO) has jurisdiction only over the registrability of marks, not over their actual use.


4. How does a party file an opposition?

 

In a majority of jurisdictions, an opposition must be filed directly with the trademark office or registry that granted the registration. In the United States, a party that believes that it will be damaged by a registration may file a Notice of Opposition with the Trademark Trial and Appeal Board (TTAB). The TTAB is the administrative tribunal that hears and decides oppositions, cancellations and appeals of final refusals issued by USPTO examining attorneys in the course of the prosecution of a trademark application. Online filing of TTAB submissions is available via the TTAB’s ESTTA (Electronic System for Trademark Trials and Appeals) portal.

In the European Union (EU), a party wishing to oppose an application for registration may institute an opposition proceeding by filing a Notice of Opposition with the European Union Intellectual Property Office (EUIPO) (formerly Office for Harmonization in the Internal Market). Online application forms are available on the EUIPO’s website. A party residing outside the EU may file an opposition; however, a legal representative in the EU must be appointed.



5. What remedies are available in an opposition proceeding?

In a majority of jurisdictions, the only remedy available in an opposition proceeding is the refusal or partial refusal to register a mark. As mentioned above (see FAQ #3), in the United States, the USPTO cannot enjoin the use of a mark, nor can it award attorney’s fees or costs. In some jurisdictions, however, such as the EU and the United Kingdom, the prevailing party may be awarded its costs.



6. What are the legal and practical effects of an opposition?

The most practical effect of an opposition is to prevent the registration of a trademark that is similar to and likely to cause consumer confusion with the opponent’s trademark. Often, an opposition proceeding, which frequently is less expensive than a court proceeding, is also used to create leverage when the opponent seeks a coexistence agreement with the applicant: faced with the threat of an opposition, the applicant may be more amenable to entering into an agreement that defines the scope of use of the respective marks. In the United States, the legal result of a successful opposition is the denial of the registration. The TTAB does not have the authority to prevent the use of an applied-for mark that does not achieve registration because of a successful opposition. In most countries, a successful opposition proceeding on grounds such as likelihood of confusion, descriptiveness or genericness may influence a civil court in further proceedings, as a court may consider the local trademark office to be an expert on those issues. In many countries (e.g., Brazil, Argentina and Chile), a court is not bound by an opposition decision in subsequent infringement proceedings, but it may take the opposition decision into account when it considers the matter. Often, it is preferable to attack an application via opposition rather than to wait for a trademark to achieve registration and then petition to cancel it. Cancellation grounds often (but not always) are more limited than opposition grounds, especially if a certain period of time has passed after registration.



Additional INTA Resources


International Opposition Guide: Comparative Practice and Procedures
Searchable database on the structure of trademark opposition practice and procedure in 90 jurisdictions. INTA membership required.

Topic Portal: Oppositions

Trademark Cancellations: International Practice and Procedures
Searchable database providing practical information on trademark cancellation practice and procedure in 90 jurisdictions. INTA membership required.

Topic Portal: Cancellations

Cancellation of a Registered Trademark Fact Sheet

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