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-timeline.html.





















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-day period,the time for filing opposition shall be extended for an additional thirty days, and further extensions of time for filing opposition may be granted by the Director for good cause when requested prior to the expiration of an extension. The Director shall notify the applicant of each extension of the time for filing opposition...



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-most column. Click on a proceeding number to select a proceeding. Proceedings that start with a 92 are cancellation proceedings and proceedings that start with a 91 are opposition proceedings.  (Proceedings that start with 8 are appeals.) At the bottom of the page for each individual search result for any  opposition or cancellation proceeding, document #1 (click on FILED AND FEE or the number ‘1’) is the opening pleading or the Notice of Opposition (opposition) or Petition for Cancellation (cancellation).

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 1-651-500-7590   (Calls are screened for ‘trademark’ and other applicable reasons for the call) for U.S. Licensed Attorney for Trademark Searches and Applications; File or Defend an Opposition or Cancellation; File or Defend an Expungement or Reexamination of a trademark registration; Trademark Refusal; Brand Positioning

For more information from Not Just Patents, see our other pages and sites:      

USPTO TESS Trademark Product Line  TMPL.US.com

TEAS Application TEAS Plus  Where to trademark search?

Trademark e Search  Strong Trademark  

Common Law Trademarks   Trademark A-Z

Grounds for Refusal  ITU unit action

Tm1a.com: Why 1(a)? Tm1b.com: Why 1(b) trademark?

Trademark Disclaimers Trademark/Patent Assignment

Examples of Disclaimers

Patent, Trademark & Copyright Inventory Forms

Trademark Search Method TEAS Standard application    

How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

Self-authenticating specimen? Trademark ID manual

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Change Trademark or Patent Ownership    

 Opposition Proceeding    

TTAB Discovery Conference Checklist

Lack of standing is not an Affirmative Defense

Trademark Register FAQ  Definition: Clearance Search

teas plus vs teas standard  approved for pub - principal register

Amend to Supplemental Register?


Trademark Search Hack-Use the same method as USPTO   

Experience appearing before the Board (TTAB)

Trademark Specimen  Statement of Use (SOU)

How To Show Acquired Distinctiveness Under 2(f)

Trademark  Refusal  Opposition Period

Which TEAS application is less likely to be refused?

Examples of Composite or Unitary Marks  

TEAS Plus refusal rate  tesssearch  Brand Positioning Help

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation

Notice of Opposition trademark sample

What is a trademark specimen?     Trademark Searching


TBMP 309 Grounds Opposition/Canc.  

 Examples and General Rules for Likelihood of Confusion

   DuPont Factors

What are Dead or Abandoned Trademarks?

Can I Use An Abandoned Trademark?  

3D Marks Trade Dress TTAB Extension of Time  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS Plus and TEAS Standard  

Extension of Time to Oppose

 tess search  Examples of Unusual Trademarks

  Extension of time to answer  

What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Overcoming Merely Descriptive Refusal  TmkApp Checklist

Likelihood of Confusion 2d  TMK.law–Knowing the law matters

Acquired Distinctiveness Examples  2(f) or 2(f) in part

Definition: Likelihood of confusion

Merely Descriptive Trademarks  Merely Descriptive Refusals

Definition of Related goods and services for trademarks

ID of Goods and Services see also Headings (list) of International Trademark Classes How to search ID Manual

How to TESS trademark search-Trademark Electronic Search System

Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests  Trademark Glossary

Pseudo Marks    How to Reply to Cease and Desist Letter

Why Hire A Private Trademark Attorney?

 Merely Descriptive Refusal   Overcome Likelihood Confusion

Common Law Rights for Domain Names

Steps in a Trademark Opposition Process   

Published for Opposition  What is Discoverable in a TTAB Proceeding Affirmative Defenses  

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)

Tips for responding to tm Refusal  

DIY Overcoming Merely Descriptive Refusals

TESS Trademark Trademark Registration Answers TESS database  

Trademark Searching Using TESS  Trademark Search Tips

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