The First Steps After Receiving a Trademark Opposition
You filed a trademark application. You overcame the examining attorney’s office actions and got the application past the examination process. The application was approved for publication. Things were moving along swimmingly! You could almost feel that certificate of registration in your grubby little hands (but my hands are not grubby you protest—maybe not yours specifically but I bet there’s at least one person reading this with grubby hands—don’t get mired in my colorful word choices).
Then suddenly with a loud boom, you are rudely awakened from your dream sequence trademark fantasy. The loud boom is the notice of opposition that was just filed and served on you. “Now what? Help! What do I do?” you say to yourself. That’s easy. Just read this blog post.
Keep Calm, It’s Just a Fight
Don’t freak out. To be clear, this advice is directed to trademark applicants who are representing themselves. Obviously, if you’re an attorney who does not specialize in trademark law, you are not going to freak out—you just need to get your hands around this area of the law.
What do I mean by keep calm? I mean assess your situation before doing anything. Do not immediately call up the opposer or opposer’s counsel and start jabbering away (likewise don’t email them). Instead, get the lay of the land and then decide on next steps.
The first thing you should know when you receive a notice of opposition is that you have 40 days to file an answer or other responsive pleading (i.e., a motion challenging the notice of opposition). You might not realize this when you first get served with the notice of opposition, but the Trademark Trial and Appeal Board (“TTAB”) will send out a schedule of dates on the heels of the notice of opposition. The schedule will inform you that you have 40 days to answer and set out the specific date the answer is due. What does this mean? It means that you have some time to get your ducks in a row so use it.
If you are wondering what the TTAB is, it is the administrative tribunal of the United States Patent and Trademark Office (“USPTO”). Once a trademark opposition is filed, jurisdiction passes from the examining attorney at the USPTO to the TTAB. So there is no use contacting the examining attorney anymore. You are now in the administrative equivalent of a trademark lawsuit. It is an adversarial proceeding. It’s a fight—mainly a paper fight (except if the parties notice depositions or request an oral hearing after final briefing).
The best way to familiarize yourself with a TTAB opposition proceeding is by reading the Trademark Trial and Appeal Board Manual of Procedure (“TBMP”), which is available online for free. By reading through the TBMP, you should be able to get a basic understanding of what is involved in a trademark opposition proceeding, which should have a calming effect.
The Stakes Are Smaller Than You Think
UPDATE: Please read the subsequent blog post on Trademark Well regarding the U.S. Supreme Court’s decision in B&B Hardware, which impacts the stakes involved in TTAB proceedings. You can read the post here.
The scope of a trademark opposition is quite limited. The sole issue before the TTAB is whether your trademark application is entitled to registration. TBMP § 102.01 (“The Board is empowered to determine on the right to register.”) This means that the TTAB does not have the power to decide trademark infringement, the right to use, or enjoin a party from using a trademark. More importantly, the TTAB does not have the power to monetarily sanction a party and does not have the power to award any monetary damages. TBMP § 502.05 (“The Board will not hold any person in contempt, or award attorneys’ fees, other expenses, or damages to any party.”).
So it is pretty easy to figure out the best case scenario and the worst case scenario if someone opposes your trademark application and you have to litigate an opposition. If you prevail, your trademark application will register (if your trademark application was filed on an intent-to-use basis, you will still have to file a statement of use after winning the opposition). If the opposer prevails, your trademark application will go abandoned.
R-e-p-r-e-s-e-n-t-a-t-i-o-n, Find Out What It Means to You
A trademark opposition is much more complicated than filing a trademark application. It is the administrative equivalent of a federal trademark infringement lawsuit. It is real litigation governed by esoteric rules of law. This means you will need to know the Federal Rules of Civil Procedure, the Rules of Practice in Trademark Cases (available at 37 C.F.R. Part 2), the TBMP, and substantive trademark law, which consists of the Lanham Act (15 U.S.C. § 1051 et seq.) and case law decided by federal courts and the TTAB. It takes even good trademark attorneys years to develop the familiarity and expertise needed to competently and effectively litigate opposition proceedings.
This leads us to a threshold question. Are you going to try to represent yourself in the trademark opposition or are you going to hire an attorney to represent you? In TBMP § 114.01, the USPTO and the TTAB do not mince words when they advise that, “because the governing practices and procedures in proceedings before the Board are quite technical and highly specialized, it is strongly recommended that an attorney familiar with trademark law represent a party.” But, of course, there are other things to consider besides the USPTO and TTAB’s feelings on the matter.
Cost. This is really the only reason not to hire an experienced trademark attorney to represent you in an opposition. An experienced, competent trademark attorney is not going to be cheap. You’re looking at somewhere between $300-$400 per hour. That will quickly add up. Unless the opposition is disposed of early—through settlement or dismissal—you’re looking at tens of thousands of dollars or more (two well-heeled companies could easily spend six figures each on attorneys’ fees). If you can afford an attorney, then I would strongly recommend that you retain one. If you absolutely cannot afford to spend any money whatsoever on an attorney, then the choice to represent yourself is an easy one. In-between these two extremes is the common situation where you can afford to spend some money on an attorney but probably not enough to litigate the opposition to the end. In these circumstances, I would recommend that you determine your budget for legal fees, hire an attorney, and let the attorney represent you for as long as you can afford it. You can always have your attorney withdraw later and represent yourself if the costs become too much.
Specialist. Hiring the wrong attorney defeats the entire purpose of hiring an attorney in the first place. This is a big mistake that I see repeated all the time—usually because the client does not appreciate that trademark law and oppositions require specialized legal knowledge. Simply put, if the attorney has not done at least one trademark opposition (and preferably many), find a different attorney. I see so many parties on the other side of a trademark opposition who are represented by attorneys who clearly do not know how to litigate a trademark opposition (if their clients only knew …). When I see an attorney on the other side who doesn’t know what he’s doing, I start licking my chops. It takes me almost no time to gauge the attorney’s experience or lack thereof—often it is the very first telephone conversation or the very first paper filed that telegraphs the attorney’s lack of familiarity with trademark opposition procedures. Lawyers specialize just like doctors. So don’t just hire a general practitioner, hire an attorney who specializes in trademark law. I wouldn’t even use a intellectual property lawyer who is not a trademark litigator. Just because an attorney knows patents or copyrights does not mean he knows trademark law or how to litigate a trademark opposition. Hire the right person for the job.
Start Off Right. If you are going to hire a trademark attorney to represent you, let the attorney handle the opposition from the start. I have had clients come and ask me to take over oppositions that they have been handling after they decide they are in over their head. Usually, the decision to represent themselves was financially driven. The problem is that they end up paying me more to fix the mistakes they have already made than I would have charged them if I had been retained to handle the opposition from the beginning. In order to fix their mistakes, I have to amend pleadings and/or file motions that would have otherwise been unnecessary. This advice also pertains to any informal communications between the parties. For example, it is hard to defend a trademark opposition if your new client already wrote a letter to the opposing party basically admitting a likelihood of confusion between the marks. In addition, think of the image that you are portraying to the other side. If they see competent trademark counsel on the other side from the beginning, you will be taken more seriously. It may even lead to a quick resolution in some cases. Representing yourself and then turning it over to an attorney after things turn sour sends a different, weaker message.
Self-Representation for Companies. In most state and federal courts, an individual can represent himself but a company can only be represented by an attorney. This forces small corporations and LLCs to hire an attorney and takes away the option of self-representation. But the TTAB allows a company to represent itself through an officer of the company who is authorized to represent it. See 37 CFR § 11.14(e). If you are a company that intends to represent itself, make sure you comply with these requirements..
Is Your Opponent Represented. In deciding whether to represent yourself, consider whether your opponent is represented by counsel. If the other party has counsel, it will make your job of representing yourself much harder. Opposing counsel is less likely to consider settlement because he believes that, with you representing yourself, it is just a matter of time before he prevails. Opposing counsel is also more likely to try to use tactics to take advantage of your inexperience, such as not complying with certain rules of procedure or evidence because you won’t know when or how to object. On the other hand, if the other party is not represented, you will be on equal footing if you decide to represent yourself too. However, you may also have an opportunity to intimidate your opponent or gain an advantage by retaining counsel.
Time Drain and Opportunity Cost. To do even a halfway decent job of representing yourself in a trademark opposition, you are going to have to put in a lot of hours. You have to learn how to be a lawyer, learn substantive trademark law, and learn all the procedural laws and rules governing trademark opposition proceedings. It is going to be hard to learn all of that in the time set out in the scheduling order issued by the TTAB. And, even if you could get up to speed, is that really how you want to spend your time?
Scout Your Opponent
I always like to get a sense of who my adversary is in the trademark opposition. I start by researching the opposer’s history in proceedings before the TTAB. The USPTO makes this quite easy. Just go to the TTAB’s inquiry system called TTABVUE. Put the name of the opposer in the party search box and click on the search button. It will return a listing of all opposition and cancellations involving the opposer.
Once I have the list, I want to get a sense of how litigious the opposer is. The volume of oppositions and cancellations involving the opposer can give you a quick sense of that. But I then do a deeper dive by going and reviewing each opposition or cancellation proceeding individually. I want to know if the opposer usually litigates these proceedings all the way to a final decision or if the opposer quickly settles these cases or eventually withdraws their opposition. I look at the documents filed to get a sense of the quality of work of the opposer’s attorney, the strategies or tactics typically employed by opposer’s attorney, and so on.
In addition to researching the opposer’s TTAB history, I will often research the opposer’s attorney’s history. Usually, the attorney will be a party’s correspondent. So just put the attorney’s name in the correspondent search box and click on the search button. This will return a list of oppositions and cancellations handled by that attorney. This will give you a sense of the attorney’s experience with TTAB proceedings, and you can sometimes learn quite a bit by going through the documents the attorney prepared and filed in prior oppositions and cancellations.
Sometimes I will also go onto PACER and search to see if the opposer has a history of filing federal trademark infringement lawsuits. This provides additional information on how litigious opposer is. It is also useful because it indicates whether opposer may attempt to up the stakes by filing a trademark infringement lawsuit in federal court (assuming there is a basis to do so).
Getting in the Ring: Respond to the Notice of Opposition
You will need to file some sort of response to the notice of opposition by the deadline set out in the TTAB’s schedule (40 days after the notice of opposition was filed). You will have many choices at your disposal:
- A motion to extend the time to respond to the notice of opposition. (Tip: I would file this motion early to increase the odds that the motion is granted before the deadline. Another option is to see if the opposer or opposer’s counsel will stipulate to an extension of time for you to respond. Of course, you will still eventually have to file an answer or motion.)
- An answer. This is the most common way of responding to a notice of opposition. If you are going to counterclaim, you must do so at the same time.
- A motion to dismiss for failure to state a claim.
- A motion for a more definite statement.
- A motion to strike matter from the notice of opposition.
There may be some additional, less commonly used motions that might be applicable in unusual circumstances, but these are the most common ways to respond to a notice of opposition.
Explaining when to use each of the above-mentioned motions and how to prepare them would involve a protracted tutorial that is beyond the scope of this blog post. However, these topics will be covered in Trademark Well’s membership content when it opens.
In the meantime, I have put together a short guide on how to prepare an answer to a notice of opposition. To receive it, simply click here:
If you need more guidance and assistance with your trademark opposition, check out Trademark Well’s Private TTAB Coaching Group.