If someone filed a trademark application for a name you were already using, I help business owners oppose a trademark application or stop it sooner, from a first demand letter through a trademark opposition before the U.S. Patent and Trademark Office. I'm Jonathan Francis, a Chicago trademark attorney and registered patent attorney, and I handle USPTO opposition matters for clients nationwide.
You don't need a registration of your own to object. Using the name first can be enough, and the earlier you act, the more options you have.
This page is general information, not legal advice about your situation.
Free, confidential case review. Send me the application's serial number and the name you use. I'll tell you where the application stands and quote a flat fee.
Contacting me does not create an attorney-client relationship. Until we've confirmed there's no conflict and agreed in writing to work together, please send only the serial number and your name, and don't include other confidential details.
What does it mean to oppose a trademark application?
A trademark opposition is a proceeding before the USPTO's Trademark Trial and Appeal Board in which someone who would be harmed by a registration asks the Board to refuse it.
Under 15 U.S.C. § 1063, "any person who believes that he would be damaged" by a registration may oppose it within 30 days after the application is published in the USPTO's Official Gazette. The Board runs the case much like a lawsuit, with pleadings, discovery and a written decision, but it decides only whether the mark gets registered. It does not award money damages.
Using the name first gives you rights, even without a registration
In the United States, trademark rights come from use, so a business that used a name first can block a later applicant's registration even if it never filed anything itself.
The Lanham Act bars registration of a mark that so resembles "a mark or trade name previously used in the United States by another and not abandoned" as to be likely to cause confusion (15 U.S.C. § 1052(d)). That is the most common ground for an opposition by a prior user.
What counts is using the name publicly to offer goods or services: sales, clients, members, a live product. Owning a matching domain name or social handle, by itself, usually isn't enough. The dates matter most, so the strongest cases are built on dated records that show the name in front of customers.
Where the application is in the process decides your options
You can oppose only after the application is published, and publication comes after the USPTO's own examination, which often takes months.
- The application is filed. Anyone can look it up by serial number in the USPTO's Trademark Status and Document Retrieval (TSDR) system.
- A USPTO examining attorney reviews it. The examiner can refuse it for their own reasons, such as a conflict with an earlier registered mark or an unclear description of goods and services. Current wait times are posted on the USPTO trademarks dashboard.
- It is published for opposition. Publication in the Official Gazette opens a 30-day window to oppose or to request more time.
- It registers, unless someone opposes. If nobody opposes, a use-based application proceeds to registration. After that, the remedy is a petition to cancel, which is slower and costs more.
Your options for stopping a trademark application
The main tools are a demand letter asking the applicant to withdraw, an extension of time to oppose, a notice of opposition, and, if the mark has already registered, a petition to cancel.
Demand letter and withdrawal
A letter setting out your earlier rights, asking the applicant to abandon the application. An applicant can expressly abandon its own application (37 C.F.R. § 2.68), and doing it before anyone opposes is usually the cheapest way out for everyone.
Extension of time to oppose
After publication, you can request 30 more days automatically, or 90 days for good cause, up to 180 days after publication in total (37 C.F.R. § 2.102). It formally tells the applicant an opposer is waiting, which makes it useful for negotiating.
Notice of opposition
The filing that starts the case. The USPTO fee is $600 per class of goods or services opposed (USPTO fee schedule). Once it's filed, the applicant can't simply walk away: abandoning the application without your written consent results in judgment against it (37 C.F.R. § 2.135).
Petition to cancel
If the mark has already registered, a likelihood-of-confusion claim based on your earlier use can generally be brought within five years of the registration date (15 U.S.C. § 1064).
Many prior users also file their own application. It won't jump ahead of the earlier-filed one, and it doesn't create your priority (your use does), but it puts your claim on record for the long term.
Why a letter of protest usually won't help a prior user
A letter of protest is a way to hand the examiner evidence during examination, but the USPTO does not consider letters of protest based on common-law prior use.
The USPTO's own guidance lists "common law prior use" among the reasons it typically won't consider (USPTO letter of protest practice tip). Protests work for conflicts with registered marks and pending applications. If your rights come from use rather than a filing, your tools are the demand letter and the opposition.
What happens once an opposition is filed
The Board sets a deadline for the applicant to answer, and an applicant who doesn't answer can lose by default.
If no answer is filed in the time the Board sets, "the opposition may be decided as in case of default" (37 C.F.R. § 2.106(a)). If the applicant does answer, the case moves through discovery, testimony and briefing on a schedule the Board sets, and many cases settle along the way, often with the application withdrawn or narrowed.
What to do this week
Look up the application, preserve dated proof of your own use, and talk to a lawyer before contacting the applicant.
- Find the application. Search the name in the USPTO's trademark search system, note the serial number, and check its status in TSDR.
- Write down your key dates. Your first sale, first client or member, first public post, and website launch.
- Preserve your records. Screenshots, invoices, posts, and repository or release history. Don't delete or edit originals.
- Don't contact the applicant yourself. What you say can shape the dispute, and a lawyer's letter carries more weight.
- Don't wait for publication to plan. The opposition window is short, and the best time to start preparing is before it opens.
The opposition window is only 30 days. Send the serial number now and I'll tell you where the application stands.
Contacting me does not create an attorney-client relationship. Until we've confirmed there's no conflict and agreed in writing to work together, please send only the serial number and your name, and don't include other confidential details.
How I handle trademark oppositions
I represent prior users on flat fees, quoted after a free review, starting with the least expensive step that could get the application withdrawn.
I'm a Chicago trademark attorney and a registered patent attorney with the USPTO, and I represent clients before the Trademark Trial and Appeal Board. Because the Board is a federal agency, I can handle oppositions for businesses anywhere in the United States. If a dispute also calls for a lawsuit, I'm admitted in Illinois and in the U.S. District Courts for the Northern and Central Districts of Illinois and the Eastern District of Wisconsin.
Related: If your own application was opposed · Trademark registration · Federal civil litigation · About Jonathan Francis
Frequently asked questions
Someone filed a trademark application for my business name. What can I do?
If you used the name first, you can ask the applicant to withdraw, oppose the application after it's published, or petition to cancel it if it has already registered. Which option fits depends on where the application is in the USPTO process and on the evidence of your earlier use.
Can I oppose a trademark if I never registered mine?
Yes. Federal law blocks registration of a mark likely to be confused with one "previously used in the United States by another and not abandoned," so earlier use can be enough without a registration. You'll need dated evidence showing you used the name publicly for your goods or services before the applicant did.
When can I file a trademark opposition?
Only after the application is published in the USPTO's Official Gazette, and then within 30 days. You can extend that window, up to 180 days after publication in total, by filing requests for extension of time before each deadline runs out.
How much does it cost to oppose a trademark application?
The USPTO filing fee is $600 per class of goods or services opposed, and requesting the first 30-day extension is free. Attorney fees depend on how far the case goes; I quote flat fees after a free review.
What if the application hasn't been published yet?
You can't oppose yet, but you can still act. A demand letter asking the applicant to withdraw often works best at this stage, and it's also the time to gather your evidence and watch the application so you don't miss the opposition window.
Does owning the domain name give me trademark rights?
Usually not by itself. Trademark rights come from using the name to offer goods or services to the public, so the domain helps mainly as evidence of when and how you started using the name.
What if the trademark already registered?
You can file a petition to cancel the registration with the Trademark Trial and Appeal Board. A claim based on your earlier use and likelihood of confusion can generally be brought within five years of the registration date.
Attorney Advertising. General information, not legal advice. Contacting this office does not create an attorney-client relationship. Prior results do not guarantee a similar outcome. Responsible attorney: Jonathan M. Francis, 3525 West Peterson Avenue, Suite 604, Chicago, Illinois 60659.