How to win a trademark opposition?
Asked by: Dewayne Boyle | Last update: June 14, 2026Score: 4.6/5 (75 votes)
To win a trademark opposition, focus on settlement (coexistence, limiting goods/services) or mounting a strong challenge by proving no likelihood of confusion through evidence, demonstrating your mark's distinctiveness, or attacking the opposer's case (e.g., lack of use). Key steps involve promptly responding (within 40 days for the US), engaging experienced counsel, preparing for discovery, and strategically negotiating, as most cases settle before trial.
How to fight a trademark opposition?
A trademark opposition is heard and judged by the Trademark Trial and Appeal Board (“TTAB”). Similar to a court case, you will have to answer every allegation made in the opposition, and you will have to file an Answer within thirty (30) days of the filing of the other person's notice of opposition.
What is the burden of proof for trademark opposition?
As the opposer who filed the opposition, you bear the burden of proof. That means that opposers have the burden of proving their case. What must be proven, therefore, depends on the specific claims contained in the Notice of Opposition.
What are the grounds for opposing a trademark?
Additional grounds that may be asserted in an Opposition or Cancellation proceeding are (1) if the mark is merely a surname; (2) the application was not filed by the owner of the mark; (3) the mark was not yet in use in commerce at the time the application was filed; (4) failure to disclaim unregistrable matter; (5) ...
What is the most common reason a trademark might be rejected?
If your trademark is confusingly similar to another trademark and the goods and services are related, consumers are likely to mistakenly believe these goods or services come from the same source. This is known as a likelihood of confusion, and it's the most common reason for refusing registration.
How to Oppose and Cancel Other Trademarks | Gerben IP
What are absolute grounds for refusal?
Absolute grounds for refusal prevent the registration of a trademark due to deficiencies in its protectability. Distinctive character is essential: brands that are too descriptive or general are rejected. Misleading information or illegal contents are frequent reasons for rejection.
How often do trademarks get rejected?
According to the United States Patent and Trademark Office (USPTO), most applications for trademarks are successful. However, around 1-in-5 trademark applications get rejected annually. For those who spend significant time and resources applying for a trademark, that rejection ratio may seem shocking.
What is the rule 47 of trademark rules?
Under Rule 47 of the Trade Marks Rules, 2017, the opponents can file evidence in reply to rebut or to deal with the evidence filed by the applicants under Rule 46 and if the opponents do not file its reply under Rule 47, the Registrar of Trade Marks may consider that the averments made and documents relied upon by the ...
What is the timeline of trademark opposition?
Trademark Opposition in India
It states that any person within 4 months from the date of publication of the trademark in the Trademarks Journal oppose the mark by filing a notice of opposition against the mark. The notice of opposition is to be filed in the prescribed manner alongwith the prescribed manner.
How long is the opposition period?
The opposition period runs from the publication date of the Journal. Then there is a two month period in which anybody may make observations on its acceptance or oppose its registration. This period can be extended to three months by anyone who is considering opposing the registration of your mark.
How long is the trademark opposition period?
Duration: Typically, the opposition period lasts for thirty days from the publication date of the trademark application. Extensions: Parties may request extensions, which can extend the opposition period by an additional thirty days or more.
What are four defenses to a trademark infringement claim?
4 Defenses to Trademark Infringement
- No Confusion. A common factor in the defenses against infringement requires showing that there is no possibility of confusion for consumers. ...
- Mark Does Not Infringe. ...
- Service/Product/Brand Differentiation. ...
- Location Location Location.
How much does it cost to file a trademark opposition?
Cost of filing notice of opposition
Filing a notice of opposition costs $600 per class when filed electronically and $700 per class for paper submissions (allowed only in limited circumstances). It's important to note that the TTAB charges this fee per class of goods or services.
How common are trademark lawsuits?
How Many Trademark Infringement Lawsuits Were Filed in 2020? In 2020, there were 11,941 trademark infringement lawsuits filed in the United States. This figure illustrates the significant number of disputes that reach the litigation stage, emphasizing the aggressive stance businesses take to protect their trademarks.
How long does a trademark appeal take?
How long does an appeal take? A. The average appeal takes approximately 15 months.
Can you lose a trademark if you don't defend it?
You Risk Losing Your Trademark Entirely
One of the most damaging outcomes of inaction is trademark abandonment. This happens when a court or agency decides that you didn't protect or use your mark properly. Once that happens, your legal ownership ends. There's also a risk of genericide.
What are common trademark mistakes?
Common trademarking mistakes include, but are not limited to: Poor choice of brand name. Your business name should resonate with your target customer and express what you do using a strong, memorable image or word. Failing to perform a complete search of trademark databases.
How do you defend a trademark opposition?
An answer to a trademark opposition may include affirmative defenses. Examples of affirmative defenses are Opposer's unclean hands or fraud in bringing the opposition. Such defenses include that the Applicant should be entitled to registration subject to certain restrictions to its identification of goods or services.
Can you challenge a trademark?
You may challenge a trademark registration issued by the USPTO by filing a petition to cancel the registration with the Trademark Trial & Appeal Board (TTAB).
What is the opposition process?
Opposition is the procedure where a third party may formally object to an application for registration of a trade mark. Following the publication of an accepted trade mark in the Official Journal, there is a three month period within which parties may oppose its registration.
What is stronger, TM or R?
Legal Protection: The ® symbol provides stronger legal protection than ™. It gives you the right to sue for trademark infringement if someone else tries to use your registered trademark without permission.
What is the most common reason that a trademark might be rejected?
Possible Grounds for Refusal of a Mark
- Likelihood of Confusion: The USPTO conducts a search for conflicting marks as part of the official examination of an application only after a trademark application is filed. ...
- Sound.
- Appearance.
- Meaning.
- Commercial Impression.
- Goods.
- Services.
- Goods and Services.
Do you get your money back if your trademark is denied?
For example, in the United States, the United States Patent and Trademark Office (USPTO) does not refund application fees for rejected trademark applications.