What to do after losing a Trademark Opposition

March 8th, 2011

Just because you lose a trademark opposition proceeding does not mean you are out of options.  In fact, The U.S. Trademark Act, namely 15 U.S.C. 1071, governs appeals from a trademark opposition decision to a court of law.  In particular, 15 U.S.C. 1071(a) states, in relevant part, that any “party to an opposition proceeding . . . who is dissatisfied with the decision of the Director or Trademark Trial and Appeal Board (TTAB), may appeal to the United States Court of Appeals for the Federal Circuit.”  Any such party unhappy with the results of the opposition proceeding must recognize that proceeding under 15 U.S.C. 1071(a) means she is waiving her right to proceed under 15 U.S.C. 1071(b).  It does allow the United States Court of Appeals for the Federal Circuit to review the decision of the opposition proceeding and issue a mandate and opinion.

Proceeding under subsection (a) is not without risk.  The adverse party to the proceeding under subsection (a) has twenty (20) days to elect to have the matter proceed under subsection (b).  15 U.S.C. 1071(b) allows for a remedy by a civil action.  Thus, while subsection (a) is typically an ex parte proceeding, subsection (b) is the more traditional plaintiff versus defendant civil litigation.

Regardless, the lesson here is that if you lose a trademark opposition proceeding, you still may use the courts to successfully oppose a trademark or successfully overcome a previously sustained opposition to your trademark application.  A trademark opposition attorney should explain these options and allow you to make an educated decision as to whether to take the trademark opposition beyond the TTAB into the United States Court of Appeal for the Federal Circuit.