[SERVICE]TTAB opposition and cancellation
Oppose a new mark within 30 days of its publication, or petition to cancel a registered mark that conflicts with yours. We bring and defend both before the Trademark Trial and Appeal Board.
Your attorneys
Andrew RapackeManaging Partner · Registered Patent AttorneyFormer Naval Engineering Officer. M.S. in electrical and electronics engineering.
Casey GoldenbergAttorney · Trademarks and Patent ProsecutionTrademarks and patent prosecution, from a scientific background.
Phillip HortonAssociate Attorney · Trademarks and IP LitigationTrademark clearance, prosecution and TTAB matters, plus IP litigation.[01]Who it's for
TTAB cases decide who can register a mark, not who can use it. They are often the cheapest point to stop a conflict, before a lookalike brand is registered and established.
An application close to your mark appeared in the Official Gazette, and the 30-day clock is running.
An extension of time to oppose holds the deadline while you investigate or negotiate.
Someone filed a notice of opposition against your mark, and the answer deadline is set.
An abandoned, unused or vulnerable registration cited against your application.
[02]Grounds
To bring a case you need a real interest in the outcome, usually an earlier mark of your own or a business that would be harmed by the registration. Then you need a ground the law recognizes.
Most cases are decided on likelihood of confusion and priority, so the evidence of who used the mark first, and how, matters most.
[03]Deadlines
Thirty days from the date the mark is published in the USPTO's Official Gazette. Extensions can push the deadline out, but never beyond 180 days from publication, and each request has to be filed before the current period runs out.
| Step | Timing | USPTO fee |
|---|---|---|
| Notice of opposition | Within 30 days of publication, or by the end of an extension | $600 per class |
| First extension | 30 days on request, or 90 days for good cause | $0 for 30 days, $200 for 90 days |
| Second extension | 60 more days for good cause, after a first 30 | $200 |
| Final extension | 60 more days, only with the applicant's consent or in extraordinary circumstances | $400 |
| Outer limit | 180 days from publication | None |
If you spot a conflicting application before it is published, a letter of protest lets you send the examining attorney objective evidence, such as your registration, for a $150 USPTO fee. It must be filed no later than 30 days after publication, and you take no further part in the case.
More on why a TTAB extension of time to oppose is so useful.
[04]Opposition or cancellation
Both are trials before the Trademark Trial and Appeal Board, run under the same rules. The difference is timing, and which grounds are still available.
| Opposition | Cancellation | |
|---|---|---|
| Against | A published application | A registered mark |
| When | Within 30 days of publication, or an extension, up to 180 days | Any ground within 5 years of registration. After that, only genericness, functionality, abandonment, fraud and a few others. Never used, after 3 years |
| USPTO fee | $600 per class | $600 per class |
| Possible outcome | The application is refused, limited or allowed | The registration is cancelled, restricted or kept |
Since the Trademark Modernization Act, anyone can ask the USPTO Director to expunge a registration for goods the mark was never used on, between 3 and 10 years after registration, or to reexamine one that was not in use when it should have been, within 5 years. The fee is $400 per class, and the USPTO describes it as a faster, less expensive alternative to a contested cancellation.
[05]How a TTAB case runs
Opposition and cancellation proceedings work much like a civil case in federal court. There are pleadings, disclosures, discovery, trial and briefs, and sometimes an oral hearing. The key difference is that the trial happens on paper. Testimony comes in by declaration or deposition, and the written record is everything the Board decides on.
Our TTAB work is led by Andrew Rapacke with Phillip Horton, whose work covers trademark clearance, prosecution, TTAB matters and IP litigation.
[06]If you are challenged
If your application is opposed or your registration is challenged, the Board sets a deadline to answer. Miss it and you can lose by default.
Losing an opposition costs the registration, not necessarily the right to keep using a mark you already use. Whether you can keep using it is a separate question, and it is worth answering before you decide how hard to fight.
[07]What the TTAB decides
The Trademark Trial and Appeal Board decides only whether a mark can be registered or stay registered. It does not decide infringement, award damages or attorney fees, or order anyone to stop using a mark.
If the conflict is in the market as well as on the register, a federal lawsuit may be needed, and the Board often suspends its case while a related court case runs. Its findings can also carry into a later court case, so a TTAB proceeding deserves the same care as a lawsuit. More on trademark litigation.
[08]Fees
We review the published mark or the registration, your rights and your deadline first, then quote the fee for the proceeding before any work begins. USPTO fees are separate.
01Start here
Free
No obligation
Before your deadline runs out
Free, no obligation02If needed
Quoted
Holds your deadline while you decide
Before the 30 days run out
Not covered by the guarantee03Then
Quoted
Quoted after the case review
Through settlement or decision
Not covered by the guaranteeTTAB proceedings are not covered by The RLG Guarantee. USPTO fees, such as $600 per class to oppose or cancel, are separate. How The RLG Guarantee works
[09]The process
What happens at each step and who does the work. Timing shown is typical, never a promised date.
TTAB proceedingPublication to decision
[10]Questions
Saw a mark like yours in the Official Gazette? Your first call is free and comes with a straight answer on whether to oppose.
Book A Free Strategy CallA proceeding before the Trademark Trial and Appeal Board to stop a published application from registering. Anyone who believes they would be harmed by the registration, usually the owner of a similar earlier mark, can file one.
Thirty days from publication in the Official Gazette. You can extend that, with fees for longer extensions, but never beyond 180 days from publication. Every extension request has to be filed before the current deadline passes.
The USPTO fee is $600 per class for a notice of opposition, and the same for a petition to cancel. Extensions of time cost $0 to $400 depending on which one. Our fee for the proceeding is quoted after a case review, before any work begins.
A request to the Trademark Trial and Appeal Board to cancel a registration that is already on the register, on grounds such as likelihood of confusion with your earlier mark, abandonment, nonuse, genericness or fraud.
Sometimes. In the first five years after registration, almost any ground is available. After five years, only certain grounds remain, such as genericness, functionality, abandonment and fraud. A mark that was never used can be challenged after three years, and expungement through the USPTO Director is available from three to ten years after registration.
Not in court. It is a trial before an administrative board at the USPTO, decided on a written record. The Board decides only whether the mark registers, and it cannot award damages or stop anyone from using a mark.
If a case goes all the way, the standard schedule of pleadings, 180 days of discovery, trial periods and briefs runs well over a year before the Board decides. Most proceedings settle before a final hearing.
Your application is refused for the goods or services at issue. That does not by itself stop you from using the mark, but the other side may use the Board's findings in a later infringement case. Either side can appeal within 63 days.
A way to send the USPTO examining attorney objective evidence against a pending application, such as your conflicting registration, before or within 30 days after publication. The fee is $150, and you take no further part in the case.
A US-licensed attorney who practices before the TTAB. Applicants and registrants based outside the US must be represented by one. We handle oppositions and cancellations for opposers, petitioners, applicants and registrants.
[11]Learning Center
Every day you wait to challenge a conflicting trademark application is another day your competitor gains market positioning under their mark. Yet most trademark owners…
Trademarks are an important part of a business’ identity and can play a crucial role influencing consumer behavior. When filing a trademark, the process is intended to…
When new trademarks are published by the United States Patent and Trademark Office (USPTO), there is a grace period during which any party with the proper standing can…
[12]Client reviews
4.7 across 614 public reviews on Google, Trustpilot and Avvo.
#1Top reviewed IP law firm*
Read client reviews“We had just a few days to meet a pending deadline with the Trademark Office, so we decided to contact the Rapacke Law Group for help.”
“Extremely impressed with their fixed fee and timely approach.”
“Answered every question I had with a phone call directly.”
Reviews reflect individual client experiences. Quotes are excerpts. Prior results do not guarantee a similar outcome. *#1 top reviewed means the most public client reviews on Google, Trustpilot and Avvo of any US patent or trademark firm.
Bring the published mark or the registration to a free IP strategy call. No obligation.
