Once an application has been approved by a trademark examiner, the next step is publication for opposition.
Each week, trademark applications approved by U.S. Patent and Trademark Office examiners are printed in the office’s publication: the Official Gazette. If a party thinks it may be damaged by the registration of a mark, the party has thirty days from the publication to oppose registration of the trademark in a legal proceeding before the Trademark Trial and Appeal Board.
A party may oppose a registration for many reasons. One reason a trademark may be opposed is that a party believes the applied-for mark so closely resembles their registered mark it may cause consumers to be confused, mistaken, or deceived. A party may oppose a registration because they believe it would dilute their own, famous trademark by diminishing its uniqueness. A mark may be opposed because a party believes the mark contains the name of a living individual without that individual’s consent. Other examples of oppositions are arguments that a mark is too generic, geographically descriptive, functional, or merely a surname. Oppositions may also be filed for more technical reasons such as the applicant had no intent to use the mark, did not use the mark, conducted unlawful use in commerce, or because the opposer believes the applicant misrepresents the source of its goods and/or services.
Oppositions are similar to federal court proceedings. The party filing the opposition is the plaintiff, and the applicant is the defendant. There are periods of discovery with requests, responses, and disclosures. Parties may have expert witness testimony. There may be depositions. Oppositions also have interrogatories and requests for production. Just as with court proceedings, parties may be compelled to produce documents and records for the other party to inspect and enter into the proceeding. The Board may grant or dismiss the opposition. Afterwards, just as in court, parties are entitled to appeal the Board decision.