Opposition Schedule

What is the Process to Oppose a Trademark Application?

Trademarks that have been approved for publication (“Publication & Issue Review Complete” for marks already in use) or have received “Notice of Allowance” (intent to use applications) are published for opposition and may be opposed by anyone who has standing for an opposition and grounds for an opposition.


The steps that an opposition proceeding go through is similar to a court trial except that it all takes place on documents that are filed at each step with the Trademark Trial and Appeal Board (TTAB). A Board of trademark judges decides the issues after reading submissions from both parties. One doesn’t have their day in court but rather files documents that are read by judges. A full blown trial proceeding goes on for more than a year but most proceedings, approximately 95%, settle one way or another before trial.


How does a Trademark Opposition Begin? Pleadings Stage

The first step in a trademark opposition is to file a Notice of Opposition during the Opposition Period or file for an extension of time to file a Notice of Opposition. If an extension of time is applied for, the Notice of Opposition must be filed within the given time frame by the original party that filed for the extension. The Notice of Opposition is the beginning of the Pleadings Stage which consists of:

The Notice of Opposition (the complaint) filed by the opposer;

The Answer and any affirmative defenses and/or counterclaims filed by the applicant; and

Any Answer to a counterclaim (if filed) filed by opposer.


What is in a Notice of Opposition? The Notice of Opposition sets out (usually in numbered paragraphs) identifying information about the opposer including its allegations for standing and grounds for opposition. Suggested format for Opposition from USPTO.


What is in an Answer to a Notice of Opposition?

In its answer the applicant is required to admit or deny the allegations in the Notice of Opposition. The applicant can also assert affirmative defenses. Affirmative defenses may include unclean hands, laches, estoppel, acquiescence, fraud, mistake, prior registration defense, prior judgment, or any other matter constituting an avoidance or affirmative defense.


What happens after the pleadings? Below is an example of the rest of the steps in a proceeding where the institution of the proceeding (when the Notice of Opposition was filed) was 9/2/2016. The pleadings are the first two steps below–the Notice of Opposition and the Answer or the Petition to Cancel and the Answer.







































Do You Have Prior Rights or Will Your Business Be Hurt By A Trademark that Someone Else is in the Process of Registering?

Call us SOON at (651) 500-7590. We can take the steps to oppose that mark on your behalf. Timing is important! The first time to oppose a mark is during the period when it has been published for opposition. After the trademark issues, the mark can only be canceled.


Plan for a Successful, Strong Trademark  

To verify a potential trademark is strong, is available to use, and is ready to register, the process should be more than a direct hit federal search. To maximize the commercial strength and minimize the weaknesses of a trademark, we start with these five steps:

1) Verify Inherent Strength (this avoids merely descriptive, geographically descriptive, likelihood of confusion and other office actions),

2) Verify Right to Use, (this avoids likelihood of confusion refusal office actions and others)

3) Verify Right to Register, (this avoids many types of refusals including merely descriptive, deceptively misdescriptive, geographically descriptive and others that can often be predicted)

 4) Verify the potential mark (as currently used) Functions As A Mark, and (this avoids specimen refusals, trade name refusals, and others. The USPTO is looking for valid use not just any use of a mark.)

5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing. (This avoids office actions to correct incorrect IDs  which can slow down a registration. Incorrect IDs  may be corrected during the prosecution of a trademark if they do not materially alter the mark or the ID. Correcting problems before application saves time and money. Filing in a new class after an application has been submitted to cure a problem ID is the same price as a new application in that class.)

*We don’t stop here but this is a good start!


A Strong Trademark is Not Just a tool to increase sales to customers–it is also easier to sell to your investors & licensees.

See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied and been refused.



Steps

Due dates

number of days from last step

Date of  institution of Notice of Opposition or Petition to Cancel

9/2/2016


Due date for an Answer - 40 days from the date of the institution order.

   (Institution date plus 40 days.)

10/12/2016

40

Deadline for a disclosure/discovery/settlement conference - 30 days from the date the answer is due. (Institution date plus 70 days.)

11/11/2016

30

Discovery opens - 30 days after the date the answer is due.  (Institution

  date plus 70 days.)

11/11/2016

0

Deadline for making initial disclosures - 30 days from the opening of the

  discovery period. (Institution date plus 100 days.)

12/11/2016

30

Deadline  for disclosure of expert testimony - 30 days prior to close of

  discovery. (Institution date plus 220 days.)

4/10/2017

120

Discovery  closes - 180 days from the opening date of the discovery period.

  (Institution date plus 250 days.)

5/10/2017

30

Deadline  for plaintiff's pretrial disclosures - 15 days prior to the opening of plaintiff's testimony period. (Institution date plus 295 days.)

6/24/2017

45

Plaintiff's  30-day testimony period - closes 90 days after the close of discovery. (Institution date plus 340 days.)

8/8/2017

45

Deadline  for defendant's pretrial disclosures - 15 days prior to the opening of defendant's testimony period.  (Institution date plus 355 days.)

8/23/2017

15

Defendant's  30-day testimony period - closes 60 days after the close of plaintiff's  testimony period.  (Institution date plus 400 days.)

10/7/2017

45

Deadline for plaintiff's rebuttal pretrial disclosures - 15 days prior to the

  opening of plaintiff's rebuttal testimony period. (Institution date plus 415

  days.)

10/22/2017

15

Plaintiff's  15-day rebuttal testimony period - closes 45 days from close of

  defendant's testimony period. (Institution date plus 445 days.)

11/21/2017

30

Deadline for Plaintiff Trial Brief

1/20/2018

60

Deadline for Defendant's Trial Brief

2/19/2018

30

Deadline for Plaintiff's reply brief, if any

3/6/2018

15

Not Just Patents® LLC

PO Box 18716, Minneapolis, MN 55418  

1-651-500-7590    

WP@NJP.legal


Aim Higher®

Facts Matter

Tmk-Law.com


Securing Your Trademark

Search Not Just Patents® sites:


Call 1-651-500-7590 or email WP@NJP.legal for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Steps to a Patent    How to Patent An Invention

Should I Get A Trademark or Patent?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Patentability Evaluation

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Name Cease and Desist

Sample Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

State & Federal Trade Secret Laws

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Shop Rights  What is a Small or Micro Entity?

Patent Drawings

Opposition Pleadings    UDRP Elements    

Oppositions-The Underdog    Misc Changes to TTAB Rules 2017

How To Answer A Trademark Cease and Desist Letter

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Trademark Refusals    Does not Function as a Mark Refusals

How to Respond to Office Actions

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $224 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Patent search-New invention

Patent Search-Non-Obvious

Trademark Attorney for Overcoming Office Actions Functional Trademarks   How to Trademark     

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal


What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks Trademark2e.com  

Likelihood of Confusion 2d

Acquired Distinctiveness  2(f) or 2(f) in part

Merely Descriptive Trademarks  

Merely Descriptive Refusals

ID of Goods and Services see also Headings (list) of International Trademark Classes

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals   FilingforTrademark.com

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses


©2008-2017 All Rights Reserved. Not Just Patents LLC, PO Box 18716, Minneapolis, MN 55418.

Call: 1-651-500-7590 or email: WP@NJP.legal. This site is for informational purposes only and is provided without warranties, express or implied, regarding the information's accuracy, timeliness, or completeness and does not constitute legal advice. No attorney/client relationship exists without a written contract between Not Just Patents LLC and its client. Past performance is no guarantee of future results. Privacy Policy Contact Us