Your application has been approved for publication—but that doesn't mean registration is guaranteed. Third parties who believe they'll be harmed by your registration can file an opposition, triggering formal proceedings that can last years and cost tens of thousands of dollars. This chapter explains how opposition and cancellation work, how to defend your application, and when settlement makes more sense than fighting.
What is Trademark Opposition?
Opposition is a legal proceeding where a third party challenges your trademark application during the publication period. After your mark is approved by the examining attorney, it's published to give others the chance to object before it registers.
The opposition period is strictly limited by jurisdiction:
| Jurisdiction | Opposition Period | Extensions Available? | Filing Fee |
|---|---|---|---|
| United States (USPTO) | 30 days after publication | Yes, up to 180 days total | $400-600 per class |
| European Union (EUIPO) | 3 months after publication | No | €320 |
| United Kingdom (UKIPO) | 2 months after publication | Yes, 1 additional month | £200 |
| Canada (CIPO) | 2 months after publication | No | CAD $250 |
Key Principle: Opposition proceedings are separate from examination. Even if an examining attorney approved your mark, third parties can still challenge it based on their own rights or other grounds the examiner may have missed.
Grounds for Opposition
Opponents must have legal standing and valid grounds to file opposition. The most common grounds include:
Likelihood of Confusion
By far the most common ground for opposition. The opponent claims your mark is confusingly similar to their registered or pending mark in related goods/services.
Example: If you applied for "CloudVault" for cloud storage services, the owner of "DataVault" for backup software might oppose based on likelihood of confusion.
Dilution of Famous Marks
Famous trademark owners can oppose even unrelated goods/services if they believe your mark will dilute the distinctiveness or tarnish the reputation of their famous mark.
Requirements:
- Mark must be genuinely famous (high bar)
- Applies to identical or nearly identical marks
- Protects brands like COCA-COLA, NIKE, GOOGLE
Descriptiveness or Generic Terms
Third parties can oppose if they believe your mark is merely descriptive or generic and should not have been approved.
Example: A trade association might oppose "Organic Coffee" for coffee products, arguing the term is generic.
Prior Use Rights
Opponents may claim they have prior common law rights based on earlier use in commerce, even without a registration.
Geographic Deceptiveness
Opposition based on your mark falsely suggesting a geographic origin.
Example: "Swiss Precision Tools" for tools not made in Switzerland.
False Suggestion of Connection
Your mark falsely suggests a connection with a person, institution, or national symbol.
Opposition Process: United States (TTAB)
The Trademark Trial and Appeal Board (TTAB) handles all opposition proceedings for the USPTO. This is an administrative proceeding, not a federal court case, but it follows litigation-like procedures.
Timeline and Process
USPTO TTAB opposition process timeline
Phase-by-Phase Breakdown
1. Notice of Opposition (Day 1)
The opponent files a Notice of Opposition with the TTAB, stating their grounds and why they'll be damaged by your registration. You receive a copy.
2. Answer (40 days)
You must file an Answer responding to each allegation in the Notice of Opposition. Failure to respond results in default judgment against you.
3. Discovery Phase (6-12 months)
Both parties exchange evidence and information:
- Document requests
- Interrogatories (written questions)
- Requests for admission
- Depositions (oral testimony under oath)
- Subpoenas to third parties
4. Trial Phase (6-12 months)
"Trial" at TTAB means written submissions, not live courtroom proceedings:
- Both parties submit evidence
- Testimony depositions
- Briefs arguing their case
- No oral arguments (written only)
5. TTAB Decision (6-12 months after trial closes)
A panel of administrative trademark judges issues a written decision sustaining or dismissing the opposition.
Costs and Timeline
| Phase | Duration | Typical Attorney Costs |
|---|---|---|
| Pre-Discovery | 2-4 months | $5,000-15,000 |
| Discovery | 6-12 months | $15,000-50,000 |
| Trial | 6-12 months | $20,000-60,000 |
| Decision Pending | 6-12 months | $5,000-15,000 |
| Total | 1.5-3 years | $45,000-140,000+ |
Budget Reality: While it's possible to represent yourself pro se at TTAB, most applicants need experienced trademark counsel. Full opposition proceedings typically cost $50,000-100,000+ in legal fees, not including potential settlement payments.
Extensions of Opposition Period
Opponents can request extensions before filing:
- First extension: 30 days (usually granted automatically)
- Additional extensions: Up to 120 more days (must show good cause)
- Maximum total: 180 days from publication
This gives opponents time to investigate your mark, attempt contact, or negotiate before formally opposing.
Opposition Process: European Union (EUIPO)
EUIPO opposition proceedings are generally faster and less expensive than USPTO proceedings, with built-in opportunities for settlement.
Timeline and Process
Step 1: Notice of Opposition (0-3 months after publication)
An opponent files a Notice of Opposition within 3 months of your application's publication. The filing fee is €320.
Requirements:
- Must own an earlier registered trademark or other earlier right
- Must show genuine conflict with your application
- No extensions available (hard 3-month deadline)
Step 2: Admissibility Check (2-4 weeks)
EUIPO checks whether the opposition is admissible:
- Proper fee paid
- Filed within deadline
- Opponent has standing (earlier right)
- Proper representation if required
If admissible, EUIPO sends you the opposition notice with a calendar of deadlines.
Step 3: Cooling-Off Period (2 months)
A unique feature of EUIPO proceedings: a mandatory cooling-off period where parties are encouraged to negotiate directly.
Benefits:
- No additional evidence or arguments yet
- Focus on settlement discussions
- Can be extended by mutual agreement
- No EUIPO involvement unless you request it
Statistics: Approximately 40-50% of EUIPO oppositions settle during or shortly after the cooling-off period.
Step 4: Adversarial Phase (if no settlement)
If the cooling-off period doesn't result in settlement:
| Stage | Party | Deadline | Purpose |
|---|---|---|---|
| Substantiation | Opponent | 2 months | Submit evidence of earlier rights and proof of use |
| Observations | Applicant | 2 months after substantiation | Respond to opponent's evidence and arguments |
| Reply (optional) | Opponent | 2 months | Address applicant's observations |
Step 5: Decision by Opposition Division (4-8 months)
The Opposition Division issues a written decision either:
- Upholding opposition: Application rejected (fully or partially)
- Rejecting opposition: Application proceeds to registration
Costs and Timeline
| Component | Cost | Timeline |
|---|---|---|
| Opposition filing fee | €320 | Day 1 |
| Cooling-off period | Minimal if no attorney | 2 months |
| Adversarial phase | €2,000-10,000 in attorney fees | 6-8 months |
| Decision pending | Included above | 4-8 months |
| Total (contested) | €2,500-15,000 | 12-18 months |
Cost Advantage: EUIPO oppositions are significantly less expensive than USPTO proceedings, typically costing €2,500-15,000 total compared to $45,000-140,000 in the US.
Defending Against Opposition
When you receive a Notice of Opposition, you have strategic choices. Not every opposition requires a full defense.
Step 1: Evaluate the Opponent's Case
Assess their evidence:
- Is their mark actually registered and in use?
- How similar are the marks (sight, sound, meaning)?
- How related are the goods/services?
- Is their mark famous or strong?
- Do they have a legitimate claim?
Assess your position:
- How important is this trademark to your business?
- Can you modify your mark or goods/services?
- Do you have evidence of coexistence in the marketplace?
- What will registration cost vs. defending?
Step 2: Choose Your Response Strategy
| Strategy | When to Use | Pros | Cons |
|---|---|---|---|
| Settle immediately | Weak case, low business impact | Minimal cost, quick resolution | Lose your trademark application |
| Negotiate coexistence | Moderate similarity, different channels | Both parties keep marks, costs split | May require geographic or class limitations |
| Narrow goods/services | Conflict in only some classes | Avoid opposition in problem areas | Reduced scope of protection |
| Fight fully | Strong case, critical brand | Potential victory, full rights | High cost, uncertain outcome, years of delay |
| Default/abandon | Not worth the cost | No expense | Lose application and filing fees |
Step 3: Settlement Negotiations
Most oppositions settle before final decision. Early settlement saves enormous costs.
Common settlement terms:
Coexistence Agreement:
- Both parties agree to coexist without objection
- May include geographic limitations (US vs. EU)
- May include class limitations (different industries)
- May include design limitations (styling differences)
Consent to Register:
- Opponent withdraws opposition
- You may agree to disclaimers or limitations
- May involve a one-time payment
Withdrawal with Prejudice:
- You abandon your application
- May receive consideration or avoid further disputes
Licensing Arrangement:
- Opponent licenses their mark to you
- Ongoing royalties or one-time fee
- Can provide rights without fighting
Settlement Tip: Initiate settlement discussions early, ideally during the cooling-off period (EU) or immediately after receiving the Notice of Opposition (US). Legal fees escalate dramatically once discovery begins.
Appealing Opposition Decisions
If the opposition decision goes against you, you can appeal—but this adds more time and expense.
United States Appeals
TTAB Decision → Federal Circuit Court of Appeals
- Deadline: 60 days from TTAB decision
- Forum: United States Court of Appeals for the Federal Circuit
- Standard: Review of legal errors (deference to TTAB's factual findings)
- Timeline: 1-2 years
- Cost: $30,000-80,000+ in additional legal fees
Alternative: File a new civil action in federal district court for a de novo trial.
European Union Appeals
Opposition Division → Boards of Appeal
- Deadline: 2 months from decision notification
- Filing fee: €720
- Timeline: 12-18 months
- Outcome: Boards of Appeal issues new decision
Boards of Appeal → General Court (CJEU)
- Deadline: 2 months from Boards of Appeal decision
- Grounds: Limited (primarily legal errors)
- Timeline: 2-3 years
- Cost: €15,000-50,000+ in legal fees
General Court → Court of Justice (final appeal)
- Very rare, only on questions of EU law
Cancellation and Invalidation Proceedings
Even after a trademark registers, third parties can challenge it through cancellation (US) or invalidation (EU) proceedings.
Grounds for Cancellation/Invalidation
| Ground | United States | European Union |
|---|---|---|
| Non-use | After 3 consecutive years | After 5 continuous years |
| Abandonment | Ceased use with intent not to resume | Included in non-use |
| Fraud | False statements in application | Included in bad faith |
| Generic | Mark became common name | Mark is generic term |
| Descriptive | Lacks distinctiveness | Absolute grounds for refusal |
| Likelihood of confusion | Conflicts with senior rights | Relative grounds (earlier rights) |
| Bad faith | Limited grounds | Filed in bad faith |
US: Petition to Cancel
Filed with the TTAB, similar procedure to opposition proceedings:
- Who can file: Anyone who believes they're damaged
- Timing:
- First 5 years: Any ground
- After 5 years: Limited grounds (fraud, generic, abandonment, functionality)
- Process: Same as opposition (discovery, trial, decision)
- Cost: $45,000-150,000+
- Timeline: 2-4 years
US: Expungement and Reexamination (Trademark Modernization Act)
New procedures introduced in 2021 allow third parties to challenge registrations based on non-use:
Expungement:
- Challenge that mark was never used on some/all goods or services
- Available 3-10 years after registration
- Lower cost than cancellation ($1,000-15,000 typically)
Reexamination:
- Challenge that mark was not in use at time of registration (1(a) applications)
- Available 3-10 years after registration
- Lower cost and faster than full cancellation
These procedures are significantly cheaper than traditional cancellation:
- Filing fee: $400 per class
- Attorney costs: $5,000-25,000
- Timeline: 6-12 months
Expungement Risk: If you filed based on use in commerce but weren't actually using the mark on all listed goods/services, you're vulnerable to expungement proceedings. Only list goods/services you're genuinely using.
EU: Cancellation Actions
Declaration of Invalidity (€630 filing fee):
- Retroactive effect (mark is invalid from the start)
- Based on earlier rights or absolute grounds
- Same adversarial procedure as opposition
- Can appeal to Boards of Appeal, then General Court
Application for Revocation (€630 filing fee):
- Forward-looking (mark cancelled from date of request)
- Based on non-use (5+ years) or mark became generic/misleading
- Burden of proof on trademark owner to show use
When to Fight vs. When to Walk Away
Not every opposition is worth defending. Make strategic decisions based on business reality, not emotion.
Fight When:
- The trademark is critical to your brand identity: Your company name, flagship product, or core brand
- You have a strong legal case: Marks are substantially different, goods/services unrelated, evidence of coexistence
- Your business can afford the cost: Budget for $50,000-150,000 and 2-4 years of proceedings
- Registration provides significant value: You're in a competitive market or plan to enforce against infringers
- You're already using the mark extensively: Significant brand investment, customer recognition, marketing spend
Walk Away When:
- The trademark has low business importance: Alternative mark, test brand, secondary product line
- The opponent has a legitimately strong case: Highly similar marks, directly competing goods, famous mark
- Cost outweighs benefit: Legal fees exceed value of registration to your business
- You haven't launched yet: Intent-to-use application, can rebrand before market launch
- Settlement offers are reasonable: Opponent offers coexistence with minor limitations
Settlement Sweet Spot
The best outcomes often involve creative settlements:
Example 1: Geographic Coexistence
- Opponent operates in North America only
- You're EU-based serving only European customers
- Agreement: Each stays in their territory, no objections
Example 2: Class Separation
- Opponent sells software (Class 9, 42)
- You sell consulting services (Class 35, 41)
- Agreement: Acknowledge different industries, coexist peacefully
Example 3: Design Differentiation
- Opponent has "CloudVault" in blocky sans-serif
- You have "Cloud Vault" in flowing script with cloud icon
- Agreement: Maintain distinct visual presentation, disclaim exclusive rights to "cloud" and "vault" terms
Costs at a Glance
Understanding the full financial impact helps make informed decisions.
| Proceeding Type | Jurisdiction | Filing Fee | Attorney Fees | Timeline | Total Cost Range |
|---|---|---|---|---|---|
| Opposition (full defense) | USPTO | $400-600 | $40,000-120,000+ | 1.5-3 years | $45,000-140,000+ |
| Opposition (settled early) | USPTO | $400-600 | $5,000-20,000 | 2-6 months | $6,000-25,000 |
| Opposition (full defense) | EUIPO | €320 | €2,000-15,000 | 12-18 months | €2,500-18,000 |
| Opposition (cooling-off settlement) | EUIPO | €320 | €500-3,000 | 2-4 months | €1,000-5,000 |
| Cancellation | USPTO | $400-600 | $50,000-150,000+ | 2-4 years | $55,000-180,000+ |
| Expungement | USPTO | $400 | $5,000-25,000 | 6-12 months | $6,000-30,000 |
| Cancellation | EUIPO | €630 | €3,000-20,000 | 12-24 months | €4,000-25,000 |
Budget for Settlement: Even if you plan to fight, budget 10-20% of expected legal fees for settlement negotiations. Most disputes resolve before final decision, and early settlement saves enormous costs.
Best Practices for Opposition Defense
Do:
- Respond promptly to all deadlines—missing deadlines can result in default judgment
- Hire experienced counsel for anything beyond simple settlements
- Document everything about your mark's use, creation, and market presence
- Consider settlement early before costs escalate
- Be realistic about your chances and the value of the trademark
- Maintain communication with the opponent (many disputes stem from misunderstanding)
Don't:
- Ignore the opposition hoping it goes away (it won't, and you'll lose by default)
- Let emotion drive decisions ("I refuse to give in!" can cost $100,000+)
- Assume you'll win because the examiner approved your mark
- Hide evidence or make false statements (can result in fraud claims)
- Fight on principle alone unless the business value justifies the cost
Frequently Asked Questions
Opposition Basics
Costs and Strategy
Cancellation and Post-Registration
What's Next
You've navigated the registration process through opposition and cancellation proceedings. For businesses serving international markets, protection in multiple countries is essential. Chapter 13 explores international trademark filing options, comparing direct national filings, regional systems like the EUIPO, and the Madrid Protocol for global coverage. You'll learn which strategy makes sense for your budget and markets.