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WHAT DOES ‘PUBLISHED FOR OPPOSITION’ MEAN?
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. This Publication and [short] time period (30 days) give someone who may be harmed by a registration of a federal trademark a way to oppose (or object to) the registration.
Note: Only potential Principal Registrations have opposition periods. Marks allowed for the Supplemental Register must be cancelled rather than opposed if any person who believes that he/she/it would be damaged by trademark having registered and can prove both Standing and Grounds. There is no set time period to cancel a Supplemental Registration but it is a good idea to cancel before the mark has a chance to acquire distinctiveness or acquire any other rights in the mark or cancellation may be more difficult.
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 $300.00 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 $300 filing fee per class.
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.
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