What is a Trademark Opposition?

Trademark opposition is a process through which one individual or entity can challenge another’s trademark application. Trademarks are rights that protect words, phrases, and images associated with the marketing of goods or services. Nearly every country in the world has a process for assigning and administering trademark rights. Allowing oppositions is an important part of that process. Different countries have different requirements for what one must do to file a trademark opposition, but all involve carefully timed petitions, evidence, and argument.

One of the most important aspects of trademark ownership is the exclusive right to use a mark in connection with a certain good or service. Trademark owners are responsible for protecting their marks, and opposition can be an important part of the trademark monitoring process. In all countries, trademark opposition is a way for proactive trademark owners to see that a trademark close to theirs has been applied for, file an opposition, and stop that application from being granted. Opposition is an early way to challenge a trademark without having to wait for that trademark to be used.

The requirements for both filing and winning a trademark opposition vary depending on local laws. In the United States, trademark oppositions are filed with the Trademark Trial and Appeal Board, which is a branch of the Patent and Trademark Office (PTO). The PTO publishes, in print and online, all pending trademark applications. There are strict filing deadlines and paperwork requirements that must be met to successfully oppose a trademark in the U.S., but all that the filer needs in terms of material opposition is a belief that the applied-for mark would, if granted, cause him harm. That harm must usually be related to some essential trademark element, such as likelihood of confusion or dilution in the marketplace.

The process is similar in both Canada and Australia. Oppositions are filed with the national trademark offices — IP Australia and the Canadian Intellectual Property Office, respectively — after publication. As is true in the U.S., anyone can file an opposition to an Australian or Canadian trademark, so long as he believes he will somehow be harmed. Australia also permits oppositions based on non-use. A non-use opposition posits that, because a registered trademark has not been actively used, it should be canceled.

The objection process is stricter in the United Kingdom and throughout the European Union. To file a trademark opposition in either of these jurisdictions, a person must first own a registered trademark that he believes would be infringed, diluted, or otherwise harmed should the application go through. The only exception is that the UK will permit anyone, registered mark holder or not, to oppose a trademark application on “absolute” grounds. An absolute objection argues that the proposed trademark is too general, and should be open for anyone to use. An application to register “milk” as a trademark for dairy beverages, for instance, could be opposed by anyone in the UK on absolute grounds.

Often times, parties involved in a trademark opposition will settle the dispute, usually by agreeing to parameters in which the applied-for trademark can be used. If the opposition goes to trial, either the trademark application will be canceled or the reviewing officers will determine that the opposition should be dismissed. Each trademark office has its own rules on who bears the costs of the trial, and whether a party launching an unsuccessful opposition should be financially penalized.

Trademark opposition is an important part of the trademark monitoring and trademark application process, but knowing the governing rules is important. Defeating oppositions as well as winning them depends as much on format as it does on strategy. Trademark oppositions can be both launched and defended individually, but it is usually best to retain the services of a trademark lawyer or attorney who is familiar with the local rules and procedures.