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Someone Opposed My Trademark Application: What an Opposition Costs

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Defending a trademark opposition costs you mostly legal work, not government fees, and the total depends on how far the case goes before it settles or ends. The first deadline matters more than anything else in this article: the Board's notice sets the date your answer is due, typically 40 days out, and missing it can cost you the application.

So check that date now. Then read the rest.

What just happened

Your application was approved by the examining attorney and published. During the opposition window, someone filed a notice of opposition with the Trademark Trial and Appeal Board, the part of the USPTO that hears these disputes. They paid a filing fee of $600 per class to do it.

The Board then sends a notice that starts the case and sets a full schedule of deadlines. Read the notice of opposition itself, too. It says who the opposer is and why they object. The common grounds are likelihood of confusion with their mark, their earlier use of a similar name, or a claim that your mark is descriptive.

The 40-day answer deadline

Your answer responds to each claim in their notice. If you don't file one on time, the Board can treat the case as a default. The Board's own notice warns that "failure to file a timely answer may result in the entry of default judgment." In practice, that means your application is gone.

This is the one deadline you can't let slide while you think it over. If you need time to negotiate, ask for it formally. Don't just go quiet.

The schedule, on paper

Every case gets its own dates, but here's the shape of one real schedule, from a Board notice issued November 30, 2022:

  • answer due 40 days later
  • discovery conference, and the start of discovery, about 70 days in
  • initial disclosures 30 days after discovery opens
  • discovery closes about six months after it opens
  • each side's 30-day trial period, then a 15-day rebuttal period
  • briefs, with the last one due about 18 months after the notice

The Board decides after that. Extensions and suspensions, for settlement talks or motions, often stretch the calendar further. Plan for this to run more than a year if nobody settles.

Where the money goes

The government fees are mostly the opposer's. Your cost is attorney time, and it builds by phase.

Pleadings. Reading their claims, checking their registrations and use, and drafting your answer. This is the cheapest phase, and it's where you learn how strong their case is.

Discovery. Written questions, document requests, sometimes depositions, on both sides. This is where the hours add up, because you're both answering their requests and making your own.

Trial. Evidence goes in through testimony and records, then each side writes a brief. A case that gets this far is the expensive version.

You'll notice I'm not quoting an average price. Surveys of lawyer charges do exist, but the main one is sold to members, and I won't print numbers I haven't checked. What I can tell you is that most of the cost is in discovery and trial, and most cases that end early end cheaper. Any lawyer you talk to should be able to estimate each phase separately, in writing.

The cheaper ways out

Talk. The Board's notice requires both sides to discuss settlement at the discovery conference, along with mediation or arbitration. Many oppositions end in a deal: you narrow the goods in your application, agree on how each brand will be used, or sign a coexistence agreement. Often the opposer only cares about one category, and cutting it costs you little.

Accelerated Case Resolution. If both sides agree, the Board's ACR process gets the case to a decision faster, with less of the expensive back and forth. The notice tells the parties to discuss it early.

Walk away, carefully. You can abandon your application. But after an opposition starts, abandoning it without the written consent of the opposer means judgment is entered against you, under 37 C.F.R. § 2.135. A judgment on the record can matter later. If you're going to let the application go, get the opposer's consent as part of the deal.

Default. Ignoring it is the worst exit. You lose the application, and you've spent nothing to learn whether you could have kept it.

Should you fight?

Ask yourself four questions:

  1. How much of your business runs on this exact name today?
  2. Did they use or file before you, for similar goods?
  3. Would narrowing your goods fix the problem?
  4. What would rebranding cost, honestly, compared to more than a year of a contested case?

If the name is central and your dates are good, defending it can be worth it. If they were first and the overlap is real, a deal or a new name often costs less. If you're picking a new name, clear it first: a Seed search at Citrus Legal is $650 for a full search and written opinion, and it credits in full toward filing if you move forward within 14 days.

What the flat packages cover, and what they don't

My flat fees cover the search, the written opinion, the federal application and procedural Office Actions. One mark is $2,600, or three payments of $950, plus the USPTO fee of $350 per class. Defending an opposition isn't part of any flat package. It's litigation, and its scope depends on the other side.

If the opposition came with a demand letter, answering a cease and desist at Citrus Legal starts at $1,100. I wrote about how those letters work in the article on receiving one. If you're earlier in the process and worried someone might oppose, see the article on letters of protest and opposition windows, which covers the same process from the other side.

The cheapest opposition is the one a good search sees coming. To start a new filing the right way, see how the packages work on the start page, and the cease-and-desist page covers letters in either direction.

Questions about your name? Email us at hello@citrus.legal, or book a paid 30-minute consultation (opens in a new tab) for advice on your specific situation.

Sources

This article is general information, not legal advice. Reading it does not create an attorney-client relationship.

When you are ready to own it

One mark. One flat fee. One attorney.

The search, the written opinion, the federal application and procedural Office Actions, for $2,600 or three payments of $950. Nothing is filed until you approve the search. If I call your mark low risk and the USPTO refuses it, I file again at no attorney fee.

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