Opposing a Trademark Application

Fact Sheets Review in Progress

For additional country-specific information on this topic, consult International Opposition Guide: Comparative Practice and Procedures. 

1. What is an opposition?

An opposition is a proceeding, allowed in most trademark 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, a party that believes it will be damaged by a resulting registration may oppose an application for that mark. Local opposition rules establish an opposition period, usually ranging from one to three months, in which a party’s opposition must be formally entered. The opposition procedure often is triggered by official publication of an application in its pre-grant stage in a governmental journal, gazette or bulletin, either in print or online. In a minority of jurisdictions, the opposition period occurs after the issuance of a registration, also known as post-grant opposition. A formal decision to uphold or dismiss the opposition, thereby refusing or granting the registration, usually is issued in writing, although settlement agreements involving amendment of the opposed application, withdrawal of the opposition and restrictions on use are commonplace.


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

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

The most frequently raised grounds for opposition include:



Most jurisdictions provide similar grounds for opposition; however, there are important exceptions. To seek specific information on a particular jurisdiction, readers are encouraged to visit INTA’s International Opposition Guide.


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 other grounds 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


4. How does a party file an opposition proceeding?

In a majority of jurisdictions, an opposition proceeding 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 and cancellations and appeals of final refusals issued by examining attorneys. In Europe’s CTM jurisdiction, 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. In the United States, the USPTO cannot enjoin the use of a mark, nor can it award attorneys’ fees or costs. In some jurisdictions, however, such as the European Union, 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 Opposer’s trademark. An opposition proceeding often is also used to create leverage when an opposer 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 use of an unregistered mark that is the subject of a successfully opposed application. 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 the local trademark office may be considered to possess expertise on those issues. In many countries, such as 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.


Additional INTA Resources

International Opposition Guide: Comparative Practice and Procedures (Accessible by members only.)

Topic Portal: Oppositions

Trademark Cancellations: International Practice and Procedures (Accessible by members only.)

Topic Portal: Cancellations

Cancellation of a Registered Trademark Fact Sheet