Trademark Opposition and Cancellation: Challenge a Mark or Defend Your Own
An opposition stops a confusing trademark application before it registers, and a cancellation attacks a mark that already has. Both are decided by the Trademark Trial and Appeal Board (TTAB), with strict deadlines. Jonathan Phillips files and defends these proceedings, and moves to federal court when a dispute needs more than the Board can give.
At a glance
Who files: The owner of an earlier mark, or anyone who can show they would be harmed by the registration.
Where: The Trademark Trial and Appeal Board, part of the Trademark Office.
What it decides: Only whether a mark may be registered or must be cancelled. The Board cannot award damages or order someone to stop using a mark.
First deadline to watch: An opposition is generally due 30 days after the mark is published, and can be extended up to 180 days from publication. A defendant's answer is due on the date in the Board's institution order.
Fees: Set by the Trademark Office; see the USPTO fee schedule.
What is the difference between an opposition and a cancellation?
Opposition: Filed after the Trademark Office approves a mark for publication but before it registers. The challenge window is short.
Cancellation: Filed after the mark has registered. The grounds available depend on how long the registration has existed. In the first five years nearly any ground that would have blocked registration is available; after that, the grounds narrow, for example to genericness, abandonment, and fraud.
What are the grounds?
Likelihood of confusion with a mark you used or registered first.
Descriptiveness or genericness: the name only describes the product, or is the common name for it.
No real use or intent to use: the applicant never used the mark, or never had a genuine plan to.
Abandonment: the owner stopped using the mark and does not intend to resume.
Fraud: the owner lied to the Trademark Office about use or ownership.
Dilution of a famous mark.
Opposition or lawsuit?
The two are not the same tool, and many disputes use both.
TTAB proceeding: Usually cheaper than federal court and focused on one question, the right to register. It is decided largely on written evidence. It cannot stop the other side from using the mark or award money.
Federal lawsuit: Can bring an injunction and money damages, but costs more and moves under court rules. See Northern District of Illinois litigation and federal IP litigation nationwide.
Why it matters to choose: A Board decision on likelihood of confusion can, in some cases, carry over into later court proceedings, so the first filing is a strategic choice, not a formality.
What if I am the one being opposed?
You have a deadline to answer, and missing it can end the case against you. The usual options are to fight the opposition, narrow your goods or services so the marks no longer overlap, negotiate a coexistence agreement, or withdraw the application. Many of these resolve by agreement, often after the first exchange of positions.
What to do in the first week
Write down the deadline in your notice or in the publication record, and confirm it with a calendar entry.
Gather your proof of use: first-use dates, sales, advertising, and examples of the mark in the market.
Do not contact the other side yet. Early statements can be used in the proceeding.
If you are the challenger, record evidence of confusion: mistaken emails, calls, orders, and reviews.
Book a short consultation to decide whether to oppose, defend, settle, or go to court.
How Jonathan handles these proceedings
Jonathan has filed, maintained, and enforced trademark portfolios of hundreds of marks, from small startups to large companies with many marks, including oppositions, cancellations, and coexistence agreements. He has handled [N] trademark matters. Flat fees and payment plans are available for many filings and responses. Prior results do not guarantee a similar outcome.
Frequently asked questions
Can I oppose a trademark just because I dislike it? No. You must show a real interest and a legal ground, such as confusion with your own mark.
What if I miss the opposition window? You may still be able to petition to cancel the mark after it registers, though the grounds depend on how long it has been registered.
Can we settle an opposition? Yes. Many are resolved by a coexistence agreement or by narrowing the application's goods and services.
What does it cost? Flat fees and payment plans are available for many filings. Government fees are set by the Trademark Office; see the USPTO fee schedule.
Is it the same as a cease-and-desist letter? No. A letter is a demand sent to the other side. See trademark cease-and-desist letters.
Recent writing
Jonathan L.A. Phillips, Brown, Hay & Stephens, LLP. Part of the Trademark hub. Last reviewed October 2026. Prior results do not guarantee a similar outcome.