Trademark Opposition: What Happens When Someone Challenges Your Application?

A trademark opposition is a formal challenge filed with the USPTO’s Trademark Trial and Appeal Board during the 30-day publication window, arguing that a pending application shouldn’t be registered. If you’re the one being opposed, you have 40 days from the date of the notice to answer, or the application will be abandoned by default. If you’re considering filing one, the fee is $600 per class for electronic filing, and the case follows a strict discovery and briefing schedule that typically takes 12 to 18 months.

After the USPTO gives an application the nod for publication, it will appear in the Official Gazette for 30 days. In that time, a third party, typically a competitor or a company with an existing registration they feel you are encroaching on, can file a notice of opposition with the Trademark Trial and Appeal Board (TTAB) if they think your mark is a problem. It is a formal way to say a pending application should not be registered, and it is distinct from an Office Action you might get from an examining attorney.

We have seen both ends of this equation with our founders. Some have had to deal with the unpleasantness of an opposition notice after months of waiting for their application; others have moved to block a mark that is too similar to their own. You won’t find many who handle it well on the first try. The forms leave no room for error, and the deadlines are unforgiving; miss an answer date, and the case is over before it has properly begun.

What Is a Trademark Opposition and When Can It Happen?

Common opposition grounds we see:

• A likelihood of confusion with what is already on the books
• The mark is nothing more than descriptive or generic for the goods at hand.
• Dilution claims put forward by owners of famous marks.
• An absence of bona fide intent to use, particularly with intent-to-use filings
• Fraud in the application, though rare, such as false use dates

Should the 30-day window close with no opposition filed, or any extension period expire, the matter is put to rest. For use-based applications, the application proceeds to trademark registration, while intent-to-use applications receive a Notice of Allowance. Most take it for granted that once an application clears the examination, registration is a formality. But the publication period is when the competitor has the opportunity to stop it.

How Much Does Filing a Trademark Opposition Cost

With the USPTO’s across-the-board fee increases in January 2025, opposition costs have climbed along with everything else. Here is the current breakdown.

An electronic filing of a notice of opposition via ESTTA is $600 per class. You can put in a paper filing for $700 per class, though hardly anyone does that these days. Should your opposition be against an application covering three classes of goods, you will be out $1,800 to file.

Then there are the fees for extension requests before filing. The initial 30-day extension comes at no charge. But if you need to request a second one for good cause, whether for 60 or 90 days, the electronic fee is $200. A final 90-day extension, with the applicant’s consent, costs $400.

These figures do not account for attorney time, which accounts for the bulk of the expense. In a contested matter that reaches discovery and trial briefs, legal fees can easily run into the tens of thousands before the Board issues a decision.

What Happens If You Receive a Notice of Opposition

Once the TTAB has put the proceeding in motion, you have 40 days to put in an answer. Do not mistake this for the kind of flexibility one might find with an Office Action deadline. Let it pass, and the Board will enter a default judgment, effectively ending your application.

Your answer must address every numbered paragraph in the opponent’s notice with an admission, denial, or a statement that you have insufficient information. Founders tend to stumble here by crafting a narrative that tells their side rather than adhering to the format the TTAB wants. While a shoddy answer won’t be rejected on the spot, it muddies the record from the start and complicates matters down the line.

From there, the case goes to a discovery conference and a discovery period, typically six months, before any trial briefs or oral hearings. In practice, most oppositions are settled. A coexistence agreement, some rebranding by the applicant, or a narrowing of the description of goods and services will put more cases to rest than a ruling from the Board.

Common Mistakes We See Founders Make During Opposition

We see them treat the 40-day deadline as optional. Clients will ring us up on day 38 to ask what an “answer” is, but the clock is ticking from the moment the Board institutes, not when you get around to reading the email.

There is also the matter of filing an application in a crowded class too close to an existing mark. Classes 25, 35, and 9 (clothing, business services, and software) are hotbeds for opposition because so much is already registered. A proper clearance search in advance would have nipped it in the bud.

Or they will ignore a cease-and-desist from a competitor before publication. Some of those letters are bluffs, certainly, but enough are not that a legal review is warranted before you press on with your filing.

And we have founders who try to do without counsel for the answer because the ESTTA interface makes it seem like nothing more than a form. It is simple to file, but the substance of what you are admitting or denying has consequences later on. Without an understanding of the legal implications, you can box yourself in during discovery.

Don’t make the mistake of thinking an opposition is a death knell for a mark. It isn’t. Many an opposed application ends up on the register, whether the opposer’s case falls apart or the two sides reach an agreement that allows the mark to proceed with some changes.

Opposition vs. Cancellation: Know the Difference

By definition, an opposition is filed against a pending application during its publication window. After registration, the door to an opposition is closed; a challenger would then file a petition to cancel. While the TTAB process is much the same, it occurs once the trademark has been granted and may rest on different grounds, such as nonuse. The cancellation fee is $600 per class under the current schedule. Should you have let your opportunity to oppose slip by, cancellation is what remains, but be aware that the grounds are more restricted after a registration has been in place for five years.

Step-by-Step: Filing a Notice of Opposition

1. Go to the Trademark Status and Document Retrieval system and verify that the application is within the 30-day window (or an extension).
2. Put in for any extension of time before that window shuts.
3. Prepare the notice of opposition, ensuring you set out your standing, the classes being contested, and your grounds.
4. Submit it via ESTTA with the $ 600-per-class payment, and serve the applicant.
5. Wait for the Board to issue its institution order to set the trial and discovery calendar.
6. Attend the discovery conference when the Board calls for it.

If you’ve received a notice of opposition or you’re weighing whether a competitor’s pending mark is worth challenging, talk to our team before your deadline gets closer. We work with founders on both sides of TTAB proceedings and can walk you through what your specific timeline actually requires.

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