If a third party is opposing your trademark application and has served you with a notice of opposition, you will be required to either submit a response or negotiate a settlement. Trademark oppositions are handled before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office (USPTO). As long as you are one of the following – the registrant of the trademark application in question; an officer, general partner or sole proprietor of the organization applying for the mark; a licensed attorney in any state; or a foreign attorney qualified to practice before the Trademark Office – you will be permitted to proceed before the Trademark Trial and Appeal Board.
Study the Trademark Trial and Appeal Board's Manual of Procedure (link in Resources). The manual will provide you with the relevant information needed to file pleadings and initiate other potential actions prior to filing your answer with the USPTO.
Obtain a copy of the trademark opposition you intend to answer. When the opposition was filed, you should have been served with a copy of the filing by mail. Study the document to determine the other party's basis for contention. Make note of the assigned opposition number, which will be in the form of “91xxxxxx.”
Draft your answer to the trademark opposition. In your answer, you must admit or deny every allegation asserted in the opposition. Assert in plain terms any applicable defenses to the allegations set forth in the opposition. Typical defenses include unclean hands, laches, estoppel, acquiescence, fraud, mistake, prior registration or any other common affirmative defense. You may also assert counterclaims in your answer when applicable.
Sign your answer and attach any exhibits as well as a certificate of service. The certificate of service is a signed pleading that verifies you have served a copy of your answer on opposing counsel. Serve a copy on opposing counsel by first class mail on the date specified in your certificate of service.
Navigate to the USPTO's Electronic System for Trademark Trials and Appeals. Go to the "File Documents in a Board Proceeding" section, and from the drop-down menu, select "Opposition, Cancellation or Concurrent Use." Type in your opposition number and click "Start."
Select the party that you represent from the identification menu and click "Next." You will be taken to the "Identify Paper" menu. Once there, select "Answer" under "Pleadings and Related Motions" and click "Next."
Upload your answer to the USPTO by browsing for the document that contains your answer. Note that the USPTO prefers all documents be submitted in PDF format.
Tips & Warnings
- If you have the consent of the other party, you may file for an extension any time before the answer is due to give yourself more time to draft an answer.
- Because of the time and expense associated with answering a trademark opposition and engaging in litigation, many parties attempt to settle oppositions before an answer is due. Carefully consider your options and attempt to negotiate a settlement with the other party if possible.
References & Resources
- Andrew P. Lahser: How to Defend a Trademark Opposition Brought by a Major Corporation
- Pliam Law Group, PA: What Is a Trademark?
- Neifeld Law: How to Win a Trademark Opposition
- United States Patent and Trademark Office: Representation Before the Board
- Merchants' Counsel LLC: Trademark Law and Litigation Guide | Notice of Opposition Basics
- United States Patent and Trademark Office: Trademark Trial and Appeal Board Manual of Practice
- United States Patent and Trademark Office: Trademark Trial and Appeal Board
- United States Patent and Trademark Office: Trademark Trial and Appeal Board Reading Room
- United States Patent and Trademark Office: Electronic System for Trademark Trials and Appeals
- United States Patent and Trademark Office: TTAB Facts and Questions
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