What to Do If Your Trademark Application Is Opposed — Strategies to Overcome Opposition

by | Sep 16, 2026

What to Do If Your Trademark Application Is Opposed — Strategies to Overcome Opposition


Applying for a trademark is a meaningful step in protecting your brand. However, even after the U.S. Patent and Trademark Office (USPTO) approves an application for publication, a third party can file an opposition during the 30-day opposition period. When an opposition is filed, this means another company believes that your mark conflicts with theirs and has formally asked the Trademark Trial and Appeal Board (TTAB) to block your registration. While receiving a notice of opposition can be worrying, it is not the end of the road. With the proper strategies, many oppositions can be resolved or overcome.


What an Opposition Means


An opposition is essentially a small lawsuit before the TTAB. The opposing party (the “opposer”) must prove that your trademark registration would cause harm, usually by showing likelihood of confusion with their existing trademark, dilution of their famous mark, or that your application is descriptive, generic, or otherwise not registrable. Ultimately, the TTAB decides whether your mark can proceed to registration. It does not rule on actual infringement or award damages to the opposing party.


First Steps After Receiving an Opposition


After receiving an opposition, you must read the notice carefully and identify the grounds for opposition. Pay attention to the calendar deadlines. You must promptly file an answer (usually within 40 days). Missing deadlines may result in a default judgment. Importantly, you should consult with counsel as trademark oppositions involve legal procedure and evidence rules. Having an experienced attorney is critical to resolving or overcoming oppositions.


Strategies to Resolve or Defend Against Opposition


A. Negotiation and Settlement

Most oppositions do not go all the way to a TTAB trial. Settlement is often faster and less expensive than full litigation; therefore, many oppositions are resolved through negotiation:

  • Consent Agreements – Both parties agree to coexist, often with conditions (e.g., geographic limits, specific logo use, or product categories).
  • Amendments – Narrowing your goods/services description can reduce overlap and resolve objections.
  • Withdrawal – Sometimes the opposer withdraws after clarification of how you intend to use the mark.

B. Procedural Defenses

Procedural defenses challenge the legitimacy of the opposition’s legal process. Strategies can include:

  • Challenge Standing – The opposer must prove it has a real interest in the outcome (e.g., owns a conflicting mark).
  • Challenge Timeliness or Sufficiency – If the opposition was filed late or lacks proper claims, you may be able to dismiss it.

C. Substantive Defenses

Substantive defenses argue that the defendant’s mark does not oppose the third party’s mark. These can include:

  • No Likelihood of Confusion – Argue that your mark is different enough in appearance, sound, meaning, or commercial impression. Emphasize differences in target markets, goods/services, or distribution channels.
  • Weak Opposer’s Mark – If their mark is descriptive or widely used, argue that its scope of protection is narrow.
  • Distinctiveness of Your Mark – Show evidence of consumer recognition, long use, or marketing investment.
  • Fair Use or Descriptive Use – In some cases, you may argue the competitor’s use is descriptive, not a trademark use.

D. Evidentiary Strategies

Evidentiary strategies present evidence to defend a mark. This can include:

  • Gather Evidence of Use – Show how your mark has coexisted with others without confusion.
  • Market Surveys – Provide consumer survey evidence demonstrating no likelihood of confusion.
  • Third-Party Use Evidence – Show other similar marks already coexist in the marketplace.

Possible Outcomes


There are several possible outcomes when an opposition is filed. These include the opposition being withdrawn (often after settlement), application allowed, application refused, and appeal. Appeals to decisions made by the TTAB are managed by the Federal Circuit or federal district court.


Preventing Opposition in the First Place


The key to avoiding opposition is preventing it in the first place. First, you should conduct comprehensive clearance searches before filing. Additionally, you must file the mark under accurate classes and narrow goods/services descriptions. Lastly, you should monitor the USPTO Gazette for marks that may conflict with yours, so you can anticipate opposition.


An opposition doesn’t mean you’ve lost your trademark, but it means that you must defend it. With legal guidance, many oppositions can be resolved through settlement, consent agreements, or strong defenses. The key is to act promptly, evaluate your options, and pursue the strategy that best protects your brand while managing costs. Ultimately, you can often resolve the dispute and move forward with protecting your brand.


If you need assistance with trademark opposition, reach out to Tracy at [email protected].


Tracy Jong is a Senior Attorney at Evans Fox LLP with 30 years of experience focusing her practice in business law, intellectual property and licensing for alcohol and cannabis. Tracy Jong is a member of the New York Bar and is a registered attorney at the United States Patent and Trademark Office. She can be reached at [email protected].


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The content has been prepared for informational purposes only; it should not be construed as legal advice, does not create or constitute an attorney-client relationship, and readers should not act upon it without seeking professional counsel.