Notice of Opposition — Template

By Casey Scott McKay · 2026-01-15

This template supplies a complete, filing-ready TTAB notice of opposition with every variable bracketed, plus the reasoning behind each paragraph and the alternative counts that make it fit the matter in front of you. It begins with the decision that precedes drafting — when an opposition is the right instrument, and the nine situations that call for a cancellation, an expungement, an ex parte appeal, a letter of protest, or a federal complaint instead. It then sets out the intake list of dates, serial numbers, status printouts, and exhibits you need before you open ESTTA, followed by the model pleading itself: a real TTAB caption, a Section 13 preamble, numbered allegations establishing the opposer's rights and entitlement to a statutory cause of action, and separate counts for priority and likelihood of confusion under Section 2(d), dilution by blurring, and lack of bona fide intent. Clause-by-clause notes tie each paragraph to authority, including the Lexmark and Corcamore entitlement test, the DuPont factors, the constructive-use priority trap of 15 U.S.C. Section 1057(c), and the status-and-title printout requirement of 37 C.F.R. Section 2.122(d). Alternative clauses cover genericness, mere descriptiveness, fraud, non-use, false suggestion of a connection, the common-law-only opposer, partial oppositions, and the Section 18 disclaimer remedy. Filing mechanics address the thirty-day window, the extension ladder to 180 days, ESTTA fees per class, the notice of institution, and the eight dates that go on the docket the day you file. A running example — a Charleston brewery and a Reno intent-to-use applicant — carries the drafting decisions from watch-notice to answer.

IP and Technology > Trademarks | Form | Published 15 January 2026 - Updated 10 February 2026 | Casey Scott McKay - marksy.us

Summary. A complete, filing-ready TTAB notice of opposition with every variable bracketed, and the reasoning behind every paragraph. Start with the instrument question: an opposition only works against a pending application in its window, and nine common fact patterns call for something else entirely. Then the intake list — publication date, serial number, status-and-title printouts, exhibits. Then the model pleading, written as a pleading: TTAB caption, Section 13 preamble, numbered allegations, separate counts for Section 2(d) priority and confusion, dilution by blurring, and lack of bona fide intent, a prayer for relief, and a signature block. Then clause-by-clause notes tying each paragraph to authority — Lexmark, Corcamore, DuPont, the constructive-use trap in 15 U.S.C. § 1057(c), and the § 2.122(d) printout that makes your registration part of the record. Then the alternative counts, the filing mechanics, and the eight dates you calendar the day it goes out.

Keywords: notice of opposition · ttab opposition · estta filing · 15 usc 1063 · 37 cfr 2.104 · entitlement to a statutory cause of action · lexmark zone of interests · corcamore · dupont factors · section 2(d) priority · dilution by blurring · lack of bona fide intent · fraud on the uspto · genericness and descriptiveness · extension of time to oppose · official gazette publication · thirty-day opposition period · notice of institution · compulsory counterclaim · madrid section 66(a) opposition

Template — not legal advice. Replace every [BRACKETED] field. Marksy is not a law firm; have any pleading reviewed by a licensed attorney before it is filed. A notice of opposition is signed under Fed. R. Civ. P. 11(b), applied to the Board by 37 C.F.R. § 2.116(a), and the signature is a representation about facts you have actually investigated.

What this template is, when to use it, and when not to

This is a notice of opposition — the pleading that opens an inter partes proceeding before the Trademark Trial and Appeal Board and asks the Board to refuse registration of somebody else's published application. It is a complaint in everything but name. It is filed under 15 U.S.C. § 1063(a), governed as to contents by 37 C.F.R. § 2.104(a), and read against the same plausibility standard the federal courts apply under Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007), and Ashcroft v. Iqbal, 556 U.S. 662 (2009), because 37 C.F.R. § 2.116(a) imports the Federal Rules of Civil Procedure.

Understand first what the Board can and cannot do. Its jurisdiction runs to the right to register, not the right to use. It will not enjoin anything, will not award damages, profits, or fees, and will not decide whether the applicant is infringing. If you win, one application dies and the applicant keeps whatever common-law rights it built. That tradeoff is laid out in Federal Court vs. TTAB and deserves an honest conversation with the client before a dollar is spent.

A Board judgment is still not weightless. B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. 138 (2015), held that a TTAB likelihood-of-confusion decision can carry issue-preclusive effect in later district court litigation where the usage adjudicated is materially the same. That cuts both ways: an opposition you lose on the merits follows you into court.

The procedural walkthrough lives in How to File a Notice of Opposition, and the pre-flight diligence in the TTAB Opposition Filing Checklist. This document is the paper.

Use this template when the target mark is a pending application on the Principal Register, it has published in the Official Gazette, the opposition window is open, and you have a ground plus a commercial interest in stopping the registration.

Do not use it — use something else — when:

| Situation | Why an opposition fails | Instead | |---|---|---| | The mark already registered | Opposition reaches applications only | Petition to cancel — see Filing a Petition for Cancellation and Opposition vs. Cancellation | | The application has not published yet | Nothing to oppose; the ESTTA form will not accept it | Letter of protest, or watch and wait — see Trademark Watch Services | | The window closed (30 days, or 180 with extensions) | The Board cannot revive an expired opposition period | Wait for registration, then cancel | | Supplemental Register application | Supplemental Register marks are not published for opposition | Cancellation under 15 U.S.C. § 1092 once registered | | The only defect is that the registrant never used the mark | Cheaper and faster ex parte routes exist post-registration | Expungement or reexamination, 15 U.S.C. §§ 1066a–1066b | | You need the goods off the shelf this quarter | The Board issues no injunctions | District court — see the Preliminary Injunction Motion Checklist for Trademark Cases and Moving for a TRO or Preliminary Injunction | | The refusal is against your application | Opposition is the wrong vehicle entirely | Ex parte appeal — see Taking an Ex Parte Appeal and the Ex Parte Appeal Checklist | | The real asset is the logo artwork, not the name | The Board has no copyright jurisdiction | See the Copyright Fundamentals Toolkit and the Copyright Infringement Complaint Checklist | | A departed employee filed under your brand and took the customer list | An opposition kills the application and nothing else | Pair it with DTSA relief — Trade Secret Protection Toolkit |

The three-question gate. (1) Is our priority date earlier than the applicant's constructive use date, not just its first-use date? (2) If we win, does the applicant still have common-law rights that hurt us? (3) Can we survive the counterclaim to cancel our own pleaded registration, which becomes compulsory the moment we plead it? A shaky answer on any one of the three changes the pleading or kills the filing.

The running example. Ferrywell Brewing Co., a Charleston, South Carolina brewery, has sold beer under FERRYWELL since 14 June 2013 and owns U.S. Reg. No. 5,412,776 in Class 32, registered 26 December 2017, with an accepted § 15 affidavit. On 3 February 2026 its watch service flagged Application Serial No. 98/412,905, FERRIWELL, filed 9 September 2025 on an intent-to-use basis by Ferriwell Beverage LLC of Reno, Nevada, covering hard seltzer and malt beverages in Class 32 and canned cocktails in Class 33. The mark published 3 February 2026. The opposition deadline is 5 March 2026; the outer limit with every available extension is 2 August 2026.

Before you start: what you need in hand

Do not open ESTTA until this list is complete. Most defective oppositions are defective because someone drafted from memory.

The target.

The serial number, filing date, and filing basis — § 1(a) use, § 1(b) intent-to-use, § 44(d)/(e), or § 66(a) Madrid. The basis fixes the applicant's priority date and, for § 66(a), permanently freezes your grounds.
The Official Gazette publication date and a current TSDR printout for the application.
The identification of goods and services as published, class by class, verbatim — you will quote it. Scope questions are unpacked in Drafting an Identification of Goods and Services and The Nice Classification System.
For a use-based application: the claimed first-use dates and the specimen.

Your rights.

A current status-and-title printout from TSDR for every registration you plead, pulled the day you file. Under 37 C.F.R. § 2.122(d)(1) that printout makes the registration part of the record without further proof. Skip it and you are proving your own registration at trial.
Chain of title matching the opposer's exact legal name. Recordal gaps invite a counterclaim; see the Trademark Assignment Recordal Checklist.
For any unregistered mark: first-use evidence, territory, and market penetration. See the Common-Law Priority Evidence Checklist.
Sales and advertising figures by year, channel list, representative specimens.

Claim-by-claim diligence. For § 2(d), a side-by-side of marks, goods, and channels mapped to the DuPont factors. For dilution, fame evidence dated before the applicant's filing date. For fraud, the specific declaration, the specific false statement, and a good-faith basis for pleading deceptive intent under Fed. R. Civ. P. 9(b). For bona fide intent, your evidence — usually the absence of any — of documentary corroboration.

The model document

Everything below is the pleading you attach to the ESTTA form as a PDF. Bracketed items in ALL CAPS are facts to insert; bracketed items in sentence case are optional or alternative language.

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In the Matter of Application Serial No. [SERIAL NUMBER]
For the Mark: [OPPOSED MARK]
Published in the Official Gazette on: [PUBLICATION DATE]

------------------------------------------------------------
[NAME OF OPPOSER],                     )
                       Opposer,        )
                                       )   Opposition No. ________
          v.                           )
                                       )
[NAME OF APPLICANT],                   )
                       Applicant.      )
------------------------------------------------------------

                    NOTICE OF OPPOSITION

[NAME OF OPPOSER], a [ENTITY TYPE] organized under the laws of
[STATE OR COUNTRY], with a principal place of business at
[ADDRESS] ("Opposer"), believes that it will be damaged by
registration of the mark shown in Application Serial No.
[SERIAL NUMBER] and hereby opposes the same under Section 13(a)
of the Trademark Act of 1946, 15 U.S.C. § 1063(a).

As grounds for opposition, Opposer alleges:

                    THE PARTIES

1.  Opposer is a [ENTITY TYPE] engaged in the business of
    [DESCRIBE BUSINESS] throughout the United States, including
    in [KEY TERRITORIES].

2.  On information and belief, Applicant [NAME] is a [ENTITY
    TYPE] organized under the laws of [STATE OR COUNTRY] with a
    principal place of business at [ADDRESS].

                    OPPOSER'S MARK AND RIGHTS

3.  Long prior to [the filing date of the opposed application /
    any date of first use on which Applicant may rely], and
    continuously since at least as early as [FIRST-USE DATE],
    Opposer has used the [trademark / service mark] [OPPOSER'S
    MARK] (the "Opposer's Mark") in United States commerce in
    connection with [GOODS/SERVICES].

4.  Opposer owns the following valid and subsisting registration
    on the Principal Register:

    Mark: [OPPOSER'S MARK]
    Registration No.: [NUMBER]
    Registration Date: [DATE]
    Class and Goods/Services: [CLASS] — [IDENTIFICATION]
    First Use / First Use in Commerce: [DATES]
    Status: [Active; Sections 8 and 15 accepted]

    A current printout from the USPTO's Trademark Status and
    Document Retrieval database showing the status of and title
    to that registration is attached as Exhibit A and made of
    record under 37 C.F.R. § 2.122(d)(1).

5.  [Opposer's registration is incontestable under Section 15 of
    the Trademark Act, 15 U.S.C. § 1065, and is conclusive
    evidence of the validity of Opposer's Mark, of Opposer's
    ownership, and of Opposer's exclusive right to use the mark
    in commerce for the goods identified, subject only to the
    defenses enumerated in 15 U.S.C. § 1115(b).]

6.  Opposer's Mark is [inherently distinctive / distinctive
    through acquired secondary meaning] and has become a strong
    source identifier as a result of Opposer's [NUMBER] years of
    continuous use, approximately $[AMOUNT] in United States
    sales, and approximately $[AMOUNT] in advertising and
    promotion. Representative examples of Opposer's use are
    attached as Exhibit B.

                    THE OPPOSED APPLICATION

7.  On [FILING DATE], Applicant filed Application Serial No.
    [SERIAL NUMBER] to register [OPPOSED MARK] (the "Applicant's
    Mark") on the Principal Register, based on [Section 1(b)
    intent to use / Section 1(a) use in commerce / Section 66(a)],
    for "[IDENTIFICATION AS PUBLISHED]" in Class [NN].

8.  The application was published for opposition in the Official
    Gazette on [PUBLICATION DATE]. This opposition is timely
    filed [within the period set by 15 U.S.C. § 1063(a) / within
    the extension of time granted to Opposer through [DATE]].

9.  [On information and belief, Applicant has not used
    Applicant's Mark in United States commerce on any of the
    goods identified in the application.]

                    ENTITLEMENT TO A STATUTORY
                    CAUSE OF ACTION

10. Opposer has a real and legitimate commercial interest in
    preventing registration of Applicant's Mark. Opposer sells
    [GOODS/SERVICES] under Opposer's Mark in the same channels
    of trade and to the same classes of purchasers to which
    Applicant's identified goods are directed.

11. Registration of Applicant's Mark would damage Opposer by
    [conferring on Applicant the presumptions of 15 U.S.C.
    § 1057(b) and § 1115 in a mark confusingly similar to
    Opposer's Mark / impairing Opposer's ability to use
    [TERM] descriptively / diluting the distinctive quality of
    Opposer's famous mark]. Opposer's belief in damage is
    reasonable and is proximately caused by the registration
    Applicant seeks.

          COUNT I — PRIORITY AND LIKELIHOOD OF CONFUSION
                    (15 U.S.C. § 1052(d))

12. Opposer realleges paragraphs 1 through 11.

13. Opposer's rights in Opposer's Mark are prior to any date of
    first use or constructive use on which Applicant is entitled
    to rely.

14. Applicant's Mark, [OPPOSED MARK], is confusingly similar to
    Opposer's Mark in appearance, sound, connotation, and
    commercial impression, differing only by [DESCRIBE
    DIFFERENCE].

15. The goods identified in the opposed application are
    [identical to / closely related to / complementary to] the
    goods covered by Opposer's registration, and neither the
    application nor Opposer's registration contains any
    restriction on channels of trade or classes of purchasers.

16. The parties' goods are or would be offered through the same
    or overlapping channels of trade, including [CHANNELS], to
    the same ordinary consumers, who purchase such goods
    [without a high degree of care / on impulse].

17. [Opposer's Mark is strong and entitled to a broad scope of
    protection. On information and belief, no third party uses a
    similar mark for similar goods.]

18. Registration of Applicant's Mark is therefore likely to cause
    confusion, mistake, or deception as to the source,
    sponsorship, or approval of Applicant's goods, within the
    meaning of Section 2(d) of the Trademark Act, 15 U.S.C.
    § 1052(d).

          COUNT II — DILUTION BY BLURRING (optional)
                    (15 U.S.C. §§ 1063(a), 1125(c))

19. Opposer realleges paragraphs 1 through 18.

20. Opposer's Mark became widely recognized by the general
    consuming public of the United States as a designation of
    source for Opposer's goods long before [FILING DATE], the
    date on which Applicant's rights, if any, commenced.

21. Opposer's Mark is famous within the meaning of 15 U.S.C.
    § 1125(c)(2)(A) because of [DURATION AND EXTENT OF USE;
    ADVERTISING; GEOGRAPHIC REACH; DEGREE OF RECOGNITION;
    REGISTRATION].

22. Applicant's Mark is so similar to Opposer's Mark that it
    gives rise to an association that impairs the distinctiveness
    of Opposer's Mark.

23. Registration of Applicant's Mark is therefore likely to cause
    dilution by blurring under 15 U.S.C. § 1125(c) and is barred
    by 15 U.S.C. § 1063(a).

          COUNT III — LACK OF BONA FIDE INTENT (optional)
                    (15 U.S.C. §§ 1051(b), 1052(d))

24. Opposer realleges paragraphs 1 through 23.

25. Applicant filed the opposed application under Section 1(b)
    and declared a bona fide intention to use Applicant's Mark in
    commerce on all of the identified goods.

26. On information and belief, Applicant had no documentary
    evidence, business plan, product development, regulatory
    filing, label, or supplier arrangement corroborating an
    intent to use Applicant's Mark on [GOODS] as of [FILING
    DATE].

27. Applicant therefore lacked the bona fide intention to use
    required by 15 U.S.C. § 1051(b), and the application is void
    [in part, as to Class [NN] / in its entirety].

                    PRAYER FOR RELIEF

WHEREFORE, Opposer prays that this opposition be sustained,
that registration of Application Serial No. [SERIAL NUMBER] be
refused [in Class [NN] / in its entirety], [and, in the
alternative, that registration be permitted only upon entry of a
disclaimer of "[TERM]" apart from the mark as shown, or upon
restriction of the identification of goods to exclude [GOODS],
under Section 18 of the Trademark Act, 15 U.S.C. § 1068,] and
that Opposer be granted such other relief as the Board deems
just.

The required fee of $[AMOUNT] for [NUMBER] class(es) is
submitted with this notice through ESTTA.

Respectfully submitted,

[LAW FIRM]
By: /[ATTORNEY NAME]/
[ATTORNEY NAME]
[ADDRESS]
[EMAIL] | [PHONE]
Attorney for Opposer

Dated: [DATE]

Exhibit A — TSDR status and title printout, Reg. No. [NUMBER]
Exhibit B — Representative specimens of Opposer's use
Exhibit C — [Fame / third-party use / other evidence]

Clause-by-clause drafting notes

The caption (unnumbered). TBMP § 309.02(a) sets the expected form: the tribunal, the opposed serial number, the mark, the publication date, the party designations, and a blank for the opposition number. Leave the number blank — the Board assigns it after the fee clears. Getting the published mark and serial number exactly right matters more than anything else on the page; an opposition against the wrong serial number is a wasted fee and, if the window closes, a wasted case.

The preamble. This is where the statute gets invoked. Section 13(a), 15 U.S.C. § 1063(a), lets "any person who believes that he would be damaged" oppose. Identify the opposer's entity type, jurisdiction of formation, and principal place of business — a partnership lists its partners, an individual lists any trade name. If the opposer is foreign-domiciled, a U.S.-licensed attorney must appear under 37 C.F.R. § 2.11(a); that is not optional and the Board enforces it.

¶¶ 3–6, the opposer's rights. Plead use, then registration, then strength — that is the order in which they do work. Paragraph 4's TSDR attachment is the highest-value line in the pleading: under 37 C.F.R. § 2.122(d)(1) a pleaded registration enters the record automatically if the notice is accompanied by a current printout showing status and title. A stale printout, or a certificate without status, does not qualify.

Paragraph 5 is optional and only for incontestable registrations. Incontestability under 15 U.S.C. § 1065 converts the § 1115(a) presumption into § 1115(b) conclusive evidence and forecloses a descriptiveness counterclaim. See Section 15 Incontestability.

The counterclaim you invite. Every registration you plead is a target. Under 37 C.F.R. § 2.106(b)(3)(i), an attack on a pleaded registration is a compulsory counterclaim, and a defendant who fails to bring it may be barred from a later separate cancellation. Vitaline Corp. v. General Mills, Inc., 891 F.2d 273, 276 (Fed. Cir. 1989). Plead the registrations that win the case, not every registration you own. Audit each one for abandonment and specimen exposure first — the Trademark Abandonment Evidence Checklist and the Trademark Fraud Claim and Self-Audit Checklist are the right pre-filing reads.

¶¶ 7–9, the opposed application. Quote the identification as published, not as filed — applicants amend during prosecution. Paragraph 8's timeliness allegation is a courtesy to the Board, but it forces you to confirm the date. Paragraph 9 is optional and should appear only where you actually intend to plead non-use or lack of bona fide intent.

¶¶ 10–11, entitlement. What used to be called standing is now "entitlement to a statutory cause of action," and the test comes from Lexmark International, Inc. v. Static Control Components, Inc., 572 U.S. 118, 129–34 (2014), as applied to the Board by Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 1303–07 (Fed. Cir. 2020), cert. denied, 141 S. Ct. 2671 (2021). Two elements: an interest within the zone of interests the Lanham Act protects, and damage proximately caused by the registration. Any real commercial interest plus a reasonable belief of damage clears it. Ritchie v. Simpson, 170 F.3d 1092, 1095 (Fed. Cir. 1999).

You do not need to own a registration, or even a mark. A refused applicant whose own application was blocked by the opposed application has entitlement. So does a competitor who wants to keep using a descriptive term. And under Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 1374 (Fed. Cir. 2020), an opposer need not own proprietary rights at all to be entitled to bring the proceeding. Establish entitlement on one ground and you may assert any other ground in the case. TBMP § 309.03(b).

Count I, § 2(d). Two elements, priority and likelihood of confusion. Cunningham v. Laser Golf Corp., 222 F.3d 943, 945 (Fed. Cir. 2000). Confusion is analyzed under the thirteen non-exclusive factors of In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). You do not plead all thirteen. You plead the ones your facts support and let the rest come in at trial.

| DuPont factor | Paragraph that carries it | What actually moves the Board | |---|---|---| | Similarity of the marks | ¶ 14 | Sound and commercial impression, not a letter count. FERRYWELL and FERRIWELL are phonetically identical | | Relatedness of goods | ¶ 15 | Compared as identified in the application and registration, not as sold in the real world | | Channels of trade | ¶ 16 | Absent a restriction, the Board presumes all normal channels | | Purchaser sophistication | ¶ 16 | Low-cost impulse goods favor the opposer | | Fame of the prior mark | ¶ 6, ¶ 17 | On a spectrum for § 2(d); binary for dilution | | Third-party use | ¶ 17 | A crowded field shrinks your scope — check before you plead strength | | Actual confusion | add as needed | Powerful but rarely available; absence is not fatal at the Board |

The deep treatment of the factors and the proof that satisfies them is in Trademark Infringement: Proving Likelihood of Confusion and, from the examiner-facing side, Responding to a §2(d) Likelihood-of-Confusion Refusal.

The constructive-use trap. Paragraph 13 says "first use or constructive use" for a reason. Under 15 U.S.C. § 1057(c), a filed application confers nationwide constructive use as of its filing date, and an intent-to-use applicant may rely on that date against a later user. Zirco Corp. v. American Telephone & Telegraph Co., 21 U.S.P.Q.2d 1542, 1544 (T.T.A.B. 1991). If Ferriwell Beverage filed on 9 September 2025 and Ferrywell Brewing's first use were 2026, the opposition would fail on priority even though Ferriwell has never sold a can. Check the filing date, not the use date, first.

Count II, dilution. Available as an opposition ground by the express terms of 15 U.S.C. § 1063(a). Fame under 15 U.S.C. § 1125(c)(2)(A) is a demanding, essentially binary threshold — the mark must be widely recognized by the general consuming public, not merely by an industry. Coach Services, Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1373 (Fed. Cir. 2012). And the fame must predate the applicant's filing date. Toro Co. v. ToroHead Inc., 61 U.S.P.Q.2d 1164, 1174 (T.T.A.B. 2001). Most regional brands are not famous in this sense. Ferrywell Brewing is not; the count comes out. The threshold and the blurring factors are treated in Trademark Dilution Under the TDRA and the Trademark Dilution Claim Checklist.

Count III, bona fide intent. A § 1(b) applicant must have had an objectively verifiable intent to use at filing. M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 1375–76 (Fed. Cir. 2015). The absence of any documentary corroboration is itself sufficient to make out a prima facie case, shifting the burden to the applicant. Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 U.S.P.Q.2d 1503, 1507 (T.T.A.B. 1993). This is the most underused count in the Board's docket — cheap to plead, awkward to answer, and it converts the applicant's own emptiness into your evidence. See Intent-to-Use Applications.

The prayer. Ask for refusal, and consider asking in the alternative for the § 18 remedies. Under 15 U.S.C. § 1068 the Board may restrict an identification or require a disclaimer rather than refuse outright. Montecash LLC v. Anzar Enterprises, Inc., 95 U.S.P.Q.2d 1060 (T.T.A.B. 2010). A restriction that carves your goods out of the applicant's identification often solves the client's actual problem and settles the same week.

Signature. Electronic signature convention at the USPTO is the name between forward slashes. The signature carries Rule 11(b) weight, imported by 37 C.F.R. § 2.116(a), and the Board has sanctioned filings made without investigation.

Alternative and optional clauses

Genericness (§ 2(d) not available; you just want to keep using the word).

Applicant's Mark is generic for the goods identified in the application. The genus of the goods is [GENUS], and the primary significance of [TERM] to the relevant purchasing public is as a common name for that genus rather than as an indication of source. Registration is therefore barred, and the application should be refused.

Primary significance is the test. Magic Wand, Inc. v. RDB, Inc., 940 F.2d 638, 640–41 (Fed. Cir. 1991); In re Cordua Restaurants, Inc., 823 F.3d 594, 599 (Fed. Cir. 2016). Genericness as to any item in a class sinks the class. Background in Genericide and the Genericness Defense and Prevention Checklist.

Mere descriptiveness, pleaded in the alternative.

In the alternative, Applicant's Mark is merely descriptive of the identified goods within the meaning of 15 U.S.C. § 1052(e)(1) because it immediately conveys [FEATURE/CHARACTERISTIC], and has not acquired distinctiveness under 15 U.S.C. § 1052(f).

Plead genericness first, descriptiveness second, on the same evidence — a generic term is, as the Federal Circuit put it, the ultimate in descriptiveness. In re Louisiana Fish Fry Products, Ltd., 797 F.3d 1332, 1336 (Fed. Cir. 2015). Note the burden shift: if the examiner published the mark on a § 2(f) showing, the opposer must first make out a prima facie case that distinctiveness was not acquired. Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1577 (Fed. Cir. 1988). See From Descriptive to Distinctive and the Secondary Meaning Evidence Checklist.

Fraud. Plead with particularity under Fed. R. Civ. P. 9(b): the declaration, the date, the signer, the specific false statement, its materiality, and facts supporting a subjective intent to deceive. The standard is clear and convincing evidence and the Federal Circuit will not let you infer intent from carelessness. In re Bose Corp., 580 F.3d 1240, 1243–45 (Fed. Cir. 2009). The Board routinely dismisses fraud counts for want of particularity. Asian & Western Classics B.V. v. Selkow, 92 U.S.P.Q.2d 1478 (T.T.A.B. 2009). Always pair it with a non-use count, which requires only falsity. See Fraud on the Trademark Office and Pleading and Proving Trademark Fraud.

The common-law-only opposer. Delete ¶¶ 4–5, keep ¶ 3, and add a paragraph pleading that the mark is distinctive — an opposer relying on an unregistered designation must establish that it functions as a mark before priority means anything. Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 1320 (C.C.P.A. 1981). Territory matters: see Establishing and Proving Common-Law Trademark Rights.

Partial opposition. Oppose only the class or the goods that hurt you. State it in the preamble, the prayer, and — critically — on the ESTTA form, because fees are per class and the form defines the proceeding.

Section 2(a) and 2(c). False suggestion of a connection with the opposer's persona, or use of a living individual's name without written consent, are separate bars under 15 U.S.C. § 1052(a) and (c). See The Section 2 Bars.

Survey support. If the case will turn on genericness, descriptiveness, or confusion among sophisticated buyers, the survey decision belongs in the pre-filing budget, not in year two. Design and admissibility are covered in Commissioning and Attacking a Trademark Survey, Consumer Surveys in Trademark Cases, and the Trademark Survey Design and Challenge Checklist.

Filing mechanics

Where it goes. ESTTA, the Board's electronic system, is mandatory. 37 C.F.R. § 2.126(a). Paper filing requires a Petition to the Director, a fee, and a showing of technical failure or extraordinary circumstances, 37 C.F.R. § 2.101(b)(2) — and is never available for a § 66(a) Madrid application, 37 C.F.R. § 2.101(b)(3).

The ESTTA form is part of the pleading. You select the grounds on the cover form and attach the PDF. Mismatches between the two cause real problems, and for § 66(a) applications the mismatch can be fatal: under 37 C.F.R. § 2.107(b), an opposition to a Madrid-based application cannot later be amended to add grounds, add goods or services, or add a joint opposer beyond what the notice identified. On a § 66(a) target you get one shot at the scope of the case. Plead broadly.

The clock.

| Step | Deadline | Fee | Authority | |---|---|---|---| | Publication in the Official Gazette | Day 0 | — | 15 U.S.C. § 1062 | | Notice of opposition, or first extension | Day 30 | Per class | 15 U.S.C. § 1063(a) | | First 30-day extension | Automatic on request | None | 37 C.F.R. § 2.102(c)(1) | | Further 60 days (after the free 30) | To day 120 | Per class | 37 C.F.R. § 2.102(c) | | Or a single 90-day extension for good cause | To day 120 | Per class | 37 C.F.R. § 2.102(c) | | Final 60 days, applicant's written consent required | To day 180 | Per class | 37 C.F.R. § 2.102(c)(3) | | Absolute outer limit | Day 180 | — | 37 C.F.R. § 2.102(c) |

Good cause is easy: investigating the claim, retaining counsel, and continuing settlement talks all qualify. The 180-day ceiling is not.

Fees. The opposition fee is charged per class opposed, per opposer, through ESTTA. It ran $600 per class for years before the USPTO's January 2025 fee adjustment, and the Office revises the schedule periodically — pull the current Trademark Fee Schedule the morning you file. ESTTA will not accept an underpayment, and a filing that fails for underpayment on day 30 is a filing that did not happen. In the Ferrywell example, opposing both Class 32 and Class 33 doubles the fee.

Service. You do not serve the notice of opposition. Since the 2017 amendments, the Board serves it by sending a notice of institution with a link to the electronic record. 37 C.F.R. §§ 2.101(a), 2.105. Every subsequent paper must be served by email with a certificate of service. 37 C.F.R. § 2.119(a)–(b).

Calendar these eight the day you file. (1) The institution order's answer deadline, normally 40 days out. (2) The discovery conference deadline. (3) Initial disclosures. (4) Close of the 180-day discovery period. (5) Expert disclosures. (6) Pretrial disclosures. (7) Your testimony period. (8) A 35-day tickler to confirm the answer arrived — if it did not, the Board issues a notice of default before entering judgment. TBMP § 312. Docketing discipline generally is covered in Docketing Deadlines.

What happens next. Expect an answer with affirmative defenses and, if you pleaded a registration with any weakness, a counterclaim to cancel it. Then the discovery conference, where most cases are really decided — see Understanding TTAB Discovery and the Protective Order. A majority of oppositions settle, frequently into a consent or coexistence arrangement; the paper for that is the Trademark Coexistence Agreement — Template.

Common mistakes

Missing the window by one day. The opposition period is not extendable once it lapses. If day 30 is close and the file is not ready, take the free 30-day extension.

Pleading the whole portfolio. Six pleaded registrations means six compulsory counterclaim targets and six times the discovery. Plead two.

Forgetting the TSDR printout. Without the § 2.122(d)(1) attachment your own registration is not in the record, and you will spend trial proving it.

Pleading strength in a crowded field. Paragraph 17 invites discovery about every third-party user you failed to police. Phillies v. Philadelphia Consolidated Holding Corp., 107 U.S.P.Q.2d 2149 (T.T.A.B. 2013), is the cautionary tale: plead broadly, answer broadly.

Pleading dilution because the mark feels famous. Regional renown is not § 1125(c) fame, and a failed dilution count costs credibility on the count that matters.

Fraud without particularity. A conclusory fraud count draws a motion to dismiss you will lose, and signals that the rest of the pleading was drafted the same way.

Treating the opposition as the endgame. Winning kills a registration; it does not stop use. If the client needs the product off the shelf, the opposition is the side dish — see the Brand Enforcement Toolkit for sequencing, and consider whether a demand should have gone first using the Trademark Cease-and-Desist Letter — Template.

Ignoring the applicant's leverage. Opposing a user with arguable prior rights can produce an infringement suit in the applicant's home district and a motion to suspend under 37 C.F.R. § 2.117. Price that risk before filing.