All Day I Dream About Opposition Proceedings

While it looks like there might not be much Ryder Cup drama this year, there has been no lack of golf-related drama in recent years. Much of the drama has related to the fledgling LIV Golf tour, which now finds itself in a new dispute.

This time, it is with Adidas, which recently initiated an opposition proceeding before the United States Patent and Trademark Office seeking to prevent LIV from registering its logo:

In its Notice of Opposition, Adidas argues that it has been using a similar three-striped mark for decades and that if LIV were allowed to register its logo as a trademark it would cause confusion between the two companies.

That is all good and well, but you may be asking, “What is an opposition proceeding?” Let me explain.

After a trademark application is filed, the application is reviewed by an Examining Attorney that works at the USPTO. If the application is approved, then it is published for opposition. Once an application is published for opposition, there is a 30-day window for any party that thinks it may be harmed by registration of the applied for trademark to oppose registration or seek an extension of time to oppose registration.

If a party chooses to oppose, it must file a Notice of Opposition providing the grounds for opposition. If a party files a Notice of Opposition, it triggers an opposition proceeding, which is an administrative proceeding before the Trademark Trial and Appeal Board.

Opposition proceedings look a lot like other legal proceedings, including a pleading phase, discovery phase, and trial phase. They can be long and, sometimes, expensive. Indeed, the schedule for the Adidas / LIV opposition proceeding currently runs until March 2025. Feel free to start taking bets over whether the PGA / LIV merger will be complete before the conclusion of the opposition proceeding.

In any event, all brand owners should be aware of opposition proceedings. As a trademark applicant, brand owners must understand that – even if an Examining Attorney approves a trademark application – there is still a risk that a third party will oppose registration of the trademark. As a trademark owner, brand owners also should consider monitoring the trademark office to determine if there are any applications that are approved that may need to be opposed.

Fortunately, most trademark firms, like Trust Tree, offer trademark monitoring services as well as a variety of opposition-related services.

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