What Is a Trademark Notice of Opposition (And What Can You Do About It)?

In a perfect world, your trademark application would sail through the appropriate channels and you can build your brand based on that mark. Unfortunately, we don’t live in a perfect world. Others have the right to oppose your application for a trademark – and even oppose the successful granting of your mark – if they believe they have an appropriate reason.

How?

Through the use of their country’s opposition process, typically dubbed a “Notice of Opposition.” Let’s explore what this notice is and what you might be able to do if you receive one.

What Is a Notice of Opposition?

Think of a Notice of Opposition – or any similarly-termed trademark opposition process – as a legal mechanism others can use to challenge your ownership of a trademark. That opposition can come in several forms. For instance, others might oppose your trademark application if your intended mark sounds, reads, or simply looks too similar to a mark they already own. In that case, the objector might argue that there’s room for confusion among consumers. Your trademark is too close to theirs, creating a situation where customers who might have come to them arrive at your business instead.

Opposition can also arise if you sell goods and services that are similar to another company, though this form of opposition is a little thornier. The “opponent” – which is the person who sends the notice – can’t deny your right to a trademark just because your product is like theirs. That’s anti-competitive and monopolistic. But they can oppose if your product uses similar branding or can otherwise be confused with their product. For instance, a new search engine might have a completely different name than Google. But if that search engine uses the same fonts, color schemes, and layouts, there are reasonable grounds for potential confusion and thus a Notice of Opposition.

How You Can Respond to Trademark Opposition

Opposition to your trademark – regardless of whether it’s in the application stage or has already been granted – doesn’t equate to immediate stripping of that mark. You have the right to respond to the opposition, though how you exercise that right varies depending on the country in which you file.

In the immediate aftermath of receiving a Notice of Opposition, we suggest the following:

1. Read the notice carefully to understand the opponent’s ground for the opposition and why they’re claiming against your trademark. Is it a name or product issue?
2. Determine whether it’s even worth responding to the notice at all. Sometimes, it simply isn’t, especially if the opposition is to a minor part of your brand or product that you can change easily. You may only have a limited time to respond. In the U.S., for example, you have 40 days to lodge an initial response, putting you on the clock.
3. Speak to a trademark attorney if you do decide to fight for your mark. They’ll help you file your response with the appropriate governing body for your country and help you gather evidence you can use to argue against the opposition.

Though this is the general route for response, your country of filing may offer others. Signing a co-existence agreement is one, in which both brands agree to maintain their trademarks with an agreement in place relating to how they use that mark in specific countries and contexts.

You can also choose to simply not fight against the Notice of Opposition, as we mentioned earlier. Limiting the products or services you sell under a specific brand so they don’t cross over with the opponent’s products and services may be an option, assuming what you limit isn’t vital to your business.

Should You Challenge a Notice of Opposition?

Therein lies the big question and the answer isn’t especially satisfying – it depends.

In some cases, the opponent may be a massive brand for which filing opposition is standard practice for anything that’s even slightly similar to its marks. It’s often worth responding in these cases, especially if the opposition lacks sufficient merit. In other words, there’s no reason why the two brands couldn’t co-exist because their products aren’t remotely similar.

However, it may be worth abandoning your trademark application if the aspect opposed is easily changeable. Conduct a cost versus benefits analysis – if it costs more to defend than it does to rebrand, then why defend at all?

Of course, you can avoid the entire possibility of opposition early in the trademark application process by working with attorneys. They’ll run searches – looking for similar marks and products – on your behalf. Sometimes, it’s better to avoid any chance of a fight than to come out of one with bruised knuckles and an empty bank account.