WHAT DOES ‘PUBLISHED FOR OPPOSITION’ MEAN FOR TRADEMARK APPLICATIONS?
Under U.S. Trademark law, 15 U.S.C. §1062(a), a trademark or service mark must be published for opposition before it can be registered on the Principal Register. (Marks on the Supplemental Register are not published for opposition.)
Any person who believes that he/she/it would be damaged by the registration of the mark and can prove both Standing and Grounds may pay the applicable fee and file a Notice of Opposition during the published for opposition time period (30 days if no extension) to oppose an application during this time period in a proceeding before the TTAB (Trademark Trial and Appeal Board) called an Opposition. After the Notice of Opposition (a pleading with claims) is filed, the rest of the proceeding moves forward in a similar manner to a court proceeding.
How Many Days Does It Take For A Trademark to Register if it is NOT OPPOSED?
Note these times were calculated with a 3 month time to examination. Current times are much longer!
See current times at https://www.uspto.gov/dashboard/trademarks/application-
WHEN IS A TRADEMARK APPLICATION PUBLISHED FOR OPPOSITION?
TBMP 306 Time for Filing Opposition
TBMP 306.01 In General
15 U.S.C. § 1062(a) [Section 12(a) of the Trademark Act] Upon the filing of an application for registrationand payment of the prescribed fee, the Director shall refer the application to the examiner in charge of theregistration of marks, who shall cause an examination to be made and, if on such examination it shall appearthat the applicant is entitled to registration, or would be entitled to registration upon the acceptance of thestatement of use required by section 1051(d) of this title, the Director shall cause the mark to be published in the Official Gazette of the Patent and Trademark Office....
15 U.S.C. § 1063(a) [Section 13(a) of the Trademark Act] Any person who believes that he would be damaged by the registration of a mark upon the principal register, including the registration of any markwhich would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may, upon payment of the prescribed fee, file an opposition in the Patent and Trademark Office, statingthe grounds therefor, within thirty days after the publication under subsection (a) of section 1062 of this title of the mark sought to be registered. Upon written request prior to the expiration of the thirty-
The current fee for a Notice of opposition, per class is $600 and the Notice must contain certain information in order to be accepted by the Trademark Trial and Appeal Board (TTAB). A Suggested Format for an opposition is provided by the USPTO at www.uspto.gov/web/offices/dcom/ttab/oppositionformat.pdf. A Petition to Cancel has the same $600 filing fee per class.
Looking for samples of Notice of Opposition or other trademark opposition samples?
TTABVUE at http://ttabvue.uspto.gov/ttabvue/ (Trademark Trial and Appeal Board Inquiry System) is searchable by proceeding number, application number, registration number, mark, party, and correspondent. For instance, if one enters ‘Not Just Patents’ or some other correspondent name in the ‘correspondent’ field and clicks search, all proceedings that involved ‘Not Just Patents’ as a correspondent come up in a chart with Proceeding Filing Date as the left-
At the top of the document window, click on the printer icon to print or click on the download arrow to download the individual file being viewed.
PREVIEW THE USPTO NOTICE OF OPPOSITION FORM
30 Days Seems like a Short Time Period!
The actual time frame to oppose after publication is only 30 days (or more with an extension) but a trademark or trade name owner (or their attorney) who is diligent about protecting their rights can search for marks to oppose long before this period starts. A claim of likelihood of confusion is the most frequently encountered issue in Board (TTAB) inter partes proceedings (309.03(c) Grounds).
The Opposition period is not just a formality to make sure the examiner did not miss a likelihood of confusion issue during examination. The USPTO only looks at the Right to Register a mark with respect to other federally registered or pending federal registrations during the examination of a mark before opposition. The Right to Use is much broader and incorporates common law rights as well as federal registration rights. The Right to Use a mark is not examined by the USPTO and can only be enforced by prior users of a mark who believe that a registration will damage their prior rights and protect those rights through opposition, cancellation or suing through the courts. An opposer may be an owner of a registered trademark, an unregistered trademark, or a trade name.
The steps to successfully completing or defending from an opposition are difficult and involve understanding NOT JUST trademark law but also federal court procedures for admitting evidence, understanding discovery and how it works and other knowledge. Not Just Patents works with small business to protect trademark rights and works to defend these rights within small budgets. Corporate giants have the budgets to oppose and cancel but do not always have the facts on their side. Let us take a look at the facts and see if your business has to just give in or if your business has a right to defend what you have worked for.
Email us at W@TMK.law. We can help you go from wanting to protect your name to having a strong, legally protectable, successful trademark. If you have started to think of names or slogans that you would like to use, the timing is perfect to take all the right steps to file and protect your trademark. If you intend to use a name in the next year or so, the timing is perfect to plan the best way to protect that name and to reserve the name for future use.
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TMk® Email W@TMK.law best or call 1- For more information from Not Just Patents, see our other pages and sites: |
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Are You a Content Provider- |
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Trademark Register FAQ Definition: Clearance Search teas plus vs teas standard approved for pub - |
Amend to Supplemental Register? |
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ID of Goods and Services see also Headings (list) of International Trademark Classes How to search ID Manual |
How to TESS trademark search- |
Likelihood of confusion- |
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Published for Opposition What is Discoverable in a TTAB Proceeding Affirmative Defenses |
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What is the Difference between Principal & Supplemental Register? |
What is a Family of Marks? What If Someone Files An Opposition Against My Trademark? Statutory Cause of Action (aka Standing) |
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