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The Official Gazette is a publication — now online — issued by the US Patent and Trademark Office (USPTO). The Official Gazette is used by the Trademark Office to publish proposed trademarks “to the world” so that other trademark owners — and/or others — might oppose the registration of the proposed trademark. This is called “publishing for opposition.” Publishing for opposition comes toward the later end of the registration process. Publication is for 30 days, and the purpose, as noted, is to allow other trademark owners to oppose the registration. The most common reason that an opposition is filed is that the proposed trademark is — allegedly — the same as or confusingly similar to an existing trademark. In theory, the USPTO has already researched the question of “same-as-or-confusingly-similar” and has determined that the proposed trademark does not violate that rule. A proposed trademark will not be published for opposition if the USPTO believes that the trademark is the same as or confusingly similar to another trademark. However, an opposition can be filed to challenge the USPTO’s determination.
Although it is less common, a trademark opposition can be filed by any other person or third party that claims that they might be damaged by the proposed trademark. For example, an opposition could be filed by a party who has a pending application for trademark registration, by a party that believes his or her likeness is being used without permission, or by an association or group seeking to defend a certification mark (like Idaho potato farmers).
The time for filing an opposition begins with the first publication. The Official Gazette is published weekly (so a proposed trademark will be published about four times). The deadline for filing an opposition is 30 days (although extensions can be granted by the Trademark Office). An opposition is initiated by filing written papers with the USPTO.
From the above, we can see the “when” and the “why” of checking the Official Gazette. A party who is seeking trademark registration must begin checking the Official Gazette at about the time that the application is filed. An applicant will receive notice from the Trademark Office when its trademark is published for opposition. So, this is not the purpose of beginning to check the Official Gazette. Rather, the purpose is to confirm that — while an application is being processed — no other pending trademark applications will be in conflict with the proposed trademark.
After a trademark is registered, it can be seen that it is crucial to begin checking the Official Gazette on at least a monthly basis. The purpose is to discover any trademark that might be the same as or confusingly similar to your trademark. The Official Gazette will show the proposed mark — in color — including words, phrases, and the design. The Official Gazette will also identify the trademark Class of goods and/or services with which the proposed trademark will be associated. Checking the Official Gazette is one of the most important tasks needed to “police” and protect your registered trademark from infringement.
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For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.
When a trademark owner identifies a conflicting mark in the Official Gazette, the clock starts running immediately. As noted, the initial opposition window is 30 days from the date of publication, and the USPTO will not extend this automatically. An extension of time to oppose — which can be obtained in 90-day increments, up to a total of 180 days — must be requested before the initial 30-day period expires. The request must be filed with the Trademark Trial and Appeal Board (TTAB) using the Electronic System for Trademark Trials and Appeals (ESTTA).
When the decision is made to oppose, the opposing party files a Notice of Opposition with the TTAB. The Notice of Opposition functions like a legal complaint — it must identify the opposer, identify the application being opposed, and set out the legal grounds for the opposition. Common grounds include likelihood of confusion with the opposer’s existing mark (15 U.S.C. § 1052(d)), descriptiveness, fraud on the USPTO, and prior use. The TTAB proceedings that follow are similar to federal court litigation, involving discovery, motions practice, and a final hearing before a panel of TTAB administrative trademark judges.
Most established trademark owners do not monitor the Official Gazette manually — the volume is too large and the window too tight. The practical approach is to subscribe to a trademark watch service, which automates the process of scanning new USPTO publications for marks that are phonetically similar, visually similar, or otherwise confusingly similar to your registered mark. Watch services can be configured to monitor across all classes or within specific classes relevant to your business.
When a watch service flags a potentially conflicting application, your trademark attorney reviews the application in detail — examining the mark itself, the goods and services identified, the applicant’s claimed date of first use in commerce, and the identified class and subclasses. This review determines whether the new application genuinely poses a threat of consumer confusion with your mark and whether an opposition is warranted. Not every similar mark requires opposition; the test is whether a significant portion of ordinary consumers would likely be confused as to the source of the goods or services. See In re E.I. DuPont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973) (setting out the multi-factor likelihood of confusion analysis still used today).
Missing the opposition window does not eliminate all options, but it significantly narrows them. After a trademark is registered, a third party can challenge it through a cancellation proceeding before the TTAB. However, the grounds available for cancellation narrow as time passes. Within five years of registration, a petitioner can seek cancellation on any ground that could have supported an opposition — including likelihood of confusion. After five years, the registered trademark becomes “incontestable” as to certain challenges under 15 U.S.C. § 1065, and the grounds for cancellation are limited to a narrow set of statutory exceptions (including genericness, fraud, and functionality).
Incontestability is a powerful legal shield. Once a mark achieves incontestable status, the registrant can use it offensively to strengthen infringement claims and defensively to defeat certain challenges. This is another reason why monitoring the Official Gazette and opposing problematic applications early is so important — the cost and difficulty of removing a conflicting mark increase dramatically once that mark achieves incontestable status.
One under-appreciated use of the Official Gazette involves domain name disputes under the Uniform Domain-Name Dispute-Resolution Policy (UDRP). If a cybersquatter registers a domain name that incorporates your trademark, you can bring a UDRP complaint before the WIPO Arbitration and Mediation Center or the Forum (formerly NAF). One element of a successful UDRP complaint is demonstrating that your trademark rights predate the domain name registration. Official Gazette publications — with their dated publication records — can provide documentary evidence of the date on which your trademark application was publicly noticed, supporting your claim of priority even before the certificate of registration issued.
Monitoring the Official Gazette is not a one-time task — it is an ongoing obligation for any serious trademark owner. Combined with a professional trademark watch service and the ability to move quickly when a conflict is identified, regular Official Gazette review is one of the most cost-effective tools available for protecting your brand. The trademark attorneys at Revision Legal provide monitoring, opposition, and enforcement services for trademark owners across all industries. Contact us through the form on this page or call (855) 473-8474.
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