Someone Opposed My Trademark Application. Now What?

Trademark

Someone Opposed My Trademark Application. Now What?

It isn't a rejection, it isn't the end of the application, and it probably won't go to trial. But there is a deadline, and missing it costs you everything.

By Kenneth G. Eade, CA Bar No. 93774 · August 2, 2026

Your application sailed through examination. It published. You were counting the weeks to registration. Then a notice of opposition arrives, referencing a company you've possibly never heard of, and the language reads like a lawsuit.

Two things to understand immediately, and they pull in opposite directions.

Your application was not rejected

The USPTO examining attorney approved it. That's why it published in the first place — publication for opposition is the step that follows successful examination.

An opposition is a third party stepping in to object before registration issues. Your application cleared examination on the merits, and the opposer now carries the burden of establishing grounds to prevent registration. That's a materially better starting position than a refusal from the Office.

But there is a deadline, and default is fatal

The Board's institution order sets your answer deadline. Extensions are commonly available on request — but they have to be requested.

If you do nothing, default judgment is entered and the application is refused. This is the single most common way applicants lose oppositions, and it is entirely avoidable. Applicants assume a proceeding will lapse if unattended, or that they can sort it out once things calm down, and lose applications they had a real chance of defending.

Find the answer deadline in the institution order before you do anything else — including reading the rest of this article.

Read the opposer's actual complaint, not their pleading style

Notices of opposition are drafted broadly. They tend to plead every available ground and describe your application as if it threatens the opposer's entire business. That's advocacy, not information.

The useful question is narrower: what does this party actually sell, and where does it genuinely overlap with what I sell?

Very often the answer is: barely. The opposer sells in an adjacent category, saw your application in a watch service, and filed defensively. Their real concern is that you'll expand into their space — not that your current products compete with theirs.

That gap between what's pleaded and what's actually at stake is where most oppositions get resolved.

Most oppositions settle, and here's the mechanism

The tool nobody mentions to sellers is the coexistence or consent agreement: a negotiated arrangement where both parties use their marks under defined limitations. Narrowing the goods each will offer. Restricting channels of trade. Agreeing on how the marks are presented.

Frequently the practical fix is even simpler — amending your identification of goods to exclude the overlap. If you applied broadly across a class but actually sell in one narrow slice of it, narrowing the identification to what you genuinely sell can eliminate the opposer's concern entirely.

You give up coverage you weren't using. They withdraw. Your application proceeds. Everyone spends a fraction of what a contested proceeding costs.

This is worth exploring early, because the cost curve in TTAB proceedings is steep. A matter that resolves before discovery costs a small share of one that runs through testimony periods and briefing.

When it's worth fighting

Sometimes settlement isn't available or isn't acceptable. Fighting makes sense where the opposer's mark is genuinely weak, where their claimed priority doesn't hold up, where the marks and goods are actually far enough apart that confusion is unlikely, or where the coverage they're asking you to give up is coverage you actually need.

A contested opposition runs like federal civil litigation conducted almost entirely on paper: pleadings, discovery including document requests and depositions, evidence submitted during assigned testimony periods, briefing, and occasionally oral argument. The Board can refuse registration but cannot award damages or issue an injunction.

Can you keep selling meanwhile?

An opposition concerns whether your application proceeds to registration. It is not an injunction and doesn't by itself prohibit use.

The caveat matters though. If the opposer holds prior rights that your use actually infringes, they have remedies in federal court that are entirely separate from the opposition. And aggressively expanding into contested territory while a proceeding is pending complicates both your settlement posture and any later litigation. Whether continued use is prudent depends on how strong their rights really are.

First moves

Calendar the answer deadline. Everything else is secondary.

Pull the opposer's mark and their actual commercial footprint. Registration record, specimens, what they really sell, where they really sell it.

Compare their goods against yours honestly. Not against your ambitions — against what you sell today.

Assess whether narrowing your identification would resolve it. If yes, that conversation should happen early, while it's still cheap.

Don't contact the opposer directly before you've done the above. An unconsidered communication in a contested proceeding is evidence.

Frequently asked

What happens if I ignore a notice of opposition?

Default judgment is entered and the application is refused. This is the most common way applicants lose an opposition and it is entirely avoidable. The answer deadline is set by the Board's institution order, and extensions are commonly available on request — but they have to be requested. Applicants who assume a proceeding will lapse if unattended lose applications they had a genuine chance of defending.

Does an opposition mean my trademark was rejected?

No. The USPTO examining attorney already approved the application — that's why it published. An opposition is a third party objecting before registration issues. Your application cleared examination on the merits, and the opposer bears the burden of establishing grounds to prevent registration. It's a contested proceeding, not a refusal by the Office.

How much does defending an opposition cost?

The range is wide because it depends almost entirely on whether and when the matter settles. Early resolution through withdrawal, consent, or coexistence costs a fraction of a proceeding that runs through discovery, testimony, and briefing. Most oppositions settle, frequently because the opposer's actual concern is narrower than their pleading and can be addressed by amending the identification of goods.

What is a coexistence agreement?

A negotiated arrangement in which both parties agree to use their marks under defined limitations — narrowing goods, restricting channels of trade, or agreeing on presentation. In many oppositions the opposer doesn't want your application dead; they want assurance you won't expand into their space. Where that's the real concern, amending the identification to exclude the overlap can resolve the whole proceeding faster and far more cheaply.

Can I keep using my brand while the opposition is pending?

An opposition concerns whether your application proceeds to registration. It is not an injunction and doesn't by itself prohibit use. But if the opposer holds prior rights your use actually infringes, they have separate remedies in federal court, and expanding aggressively into contested territory during a proceeding complicates both settlement and any later litigation. Whether continued use is prudent depends on the strength of their rights.

Send us the notice of opposition.

We'll assess the opposer's actual rights, tell you whether narrowing your identification resolves it, and answer before the deadline — which is the part that can't wait.

Opposition Defense Services Free Evaluation

General information only, not legal advice, and no attorney-client relationship is created by this post. Deadlines, available grounds, and procedure depend on the Board's order in your proceeding and on rules that change. Attorney advertising. Related: TTAB attorneys · cancellation · trademark registration

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