USPTO Trademark Opposition: Defense & Strategy

Responding to oppositions. Evidence requirements, settlement tactics, TTAB procedures.

Trademark Lens Team

30-day opposition window after USPTO publication. 73% of oppositions settle pre-trial. Response deadline absolute - miss it = automatic loss. Legal costs $15K-$100K.

Opposition Basics

Your mark published in Official Gazette. Existing trademark holders have 30 days to oppose (extendable to 180 days). Grounds: Likelihood of confusion, dilution, descriptiveness.

Opposition filings: 3% of published trademarks face opposition vs 97% proceed unchallenged - select distinctive names to avoid this 3%.

The Settlement Window

First 30 days = mandatory settlement discussion. 73% settle here. Cheaper than litigation. Common deal: You add disclaimer, change design element, restrict goods/services.

Coexistence Agreements

Both use similar mark in different markets. "Delta" = airlines + faucets. Agreement defines boundaries: geographic limits, product categories, design differences. USPTO accepts if parties agree.

Discovery Phase

Settlement fails? Enters TTAB (Trademark Trial and Appeal Board). Discovery = expensive. Depositions, document requests, interrogatories. $30K-$70K legal fees before trial.

TTAB proceedings lasting 12+ months: 67% vs 33% resolved within 6 months - budget for extended timeline, most drag on.

Proof Requirements

Opposer must prove: (1) Standing (they own prior mark), (2) Likelihood of confusion. You prove: (1) No confusion (different markets/goods), (2) Your mark distinctive, (3) Prior use (if applicable).

The Weak Opposition

Troll oppositions exist. Filed to extract settlement fees. Check opposer's history: Serial filer? Likelihood weak. Pushback costs less than settling extortion.

Oppositions filed by entities owning 50+ trademarks: 91% settle for $5K-$20K vs actual litigation - trademark trolling profitable unless challenged.

Preventive Measures

Comprehensive clearance search before filing = fewer oppositions. Attorney opinion letter = good faith defense. Monitoring service = early warning of conflicting applications.

Trademark Lens screens existing trademarks before you file - identify likely opponents, adjust strategy before $15K legal battle begins.

Ready to Verify Your Business Name?