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When you make an application to register a trademark or service mark with the US Trademark Office, one step in the process is publishing your trademark in the Trademark Office’s Official Gazette (“TMOG”). Officially, this is known as “publishing for opposition.” As the name implies, the purpose of publication is to allow third parties to oppose registration.
The TMOG is published each Tuesday (online) and, with respect to trademarks published for opposition, the TMOG will show a depiction of the mark (in color if the trademark contains color), the identification of goods and/or services with which the mark will be associated and owner information.
Publication for opposition does not occur until near the end of the registration process. As such, applicants should see publication as a “good sign” since the Trademark Office will not publish a proposed trademark unless and until all of the requirements for registration have been satisfied. In brief summary of the process, about two to four months after an application for trademark registration is received, the Trademark Office will assign the application to an examining attorney. The examining attorney is tasked with ensuring that the application is complete and that the proposed trademark meets all of the statutory requirements for registration. Some of the legal requirements include verifying that the proposed trademark
If the examining attorney is satisfied that the proposed trademark satisfies these and other legal requirements, then the examining attorney will schedule the trademark for publication. Thus, as noted, applicants should be encouraged if their proposed trademark is approved for publication.
Publication for opposition in the TMOG is for 30 days. As noted, the purpose of the publication is to provide notice to “the world” that the applicant seeks registration of this particular trademark and to allow third parties to object to registration.
To oppose a trademark registration, a third party must file a written document with the Trademark Office that is called a “Notice of Opposition.” Applicable fees must also be paid (currently $400 per Opposition). A Notice of Opposition can only be filed by persons or entities who “would be damaged by the registration of a mark on the Principal Register.” In practice, this means that Oppositions are mostly only filed by those persons/entities that own their own trademarks and who believe that the proposed trademark infringes or otherwise damages their trademark. The most common reason for an Opposition is the claim that the proposed trademark is too similar to an already-registered trademark.
A Notice of Opposition must be filed within 30 of the last publication date. If no Oppositions are filed, then the Trademark Office will typically issue a Certificate of Registration about six to eight weeks after the publication period ends.
However, if a Notice of Opposition is received, then the Trademark Office will engage in further examination of the trademark application. If a Notice of Opposition is filed, the Trademark Office notifies the applicant and the applicant has a chance to respond. It is essential that the applicant respond because, otherwise, the Trademark Office will assume that the trademark application is abandoned. Sometimes Oppositions can be resolved between the parties, but, often, Oppositions must be resolved through trial proceedings before the Trademark Trial & Appeal Board.
For more information or if you have questions about creating and registering a trademark or if you are facing an Opposition or want to file one, contact the trademark litigation attorneys at Revision Legal at 231-714-0100.
Publication for opposition in the Official Gazette opens a 30-day window during which any person who believes they would be damaged by registration of the applied-for mark may file a Notice of Opposition with the Trademark Trial and Appeal Board. Under 15 U.S.C. § 1063, the standard for standing is broad: a party has standing to oppose if they have a reasonable belief that they would be damaged by the registration, which courts have interpreted to include trademark owners of similar marks, prior users, and businesses in competitive markets.
The 30-day opposition period runs from the publication date shown in the Official Gazette. Importantly, any party may request an extension of time to oppose—a 30-day automatic extension is available, with additional 60-day extensions available for good cause and by consent, potentially pushing the final opposition deadline to 180 days after publication. Applicants should not assume that silence during the initial 30 days means the coast is clear.
If your trademark receives a Notice of Opposition, the TTAB will issue a trial order setting out the discovery schedule and testimony periods. The applicant/respondent must file an answer within 40 days of the commencement date noted in the trial order. Failure to answer results in a default judgment against the applicant, which means the trademark application will be refused.
In the answer, the respondent should:
The most common grounds for opposing a trademark are likelihood of confusion under § 2(d) of the Lanham Act and priority of use. Other grounds include:
If the opposition is successful, the trademark application is refused and the mark cannot proceed to registration. If the applicant successfully defends against the opposition, the mark proceeds to registration. If the proceedings settle—which is common—the parties typically enter into a consent agreement or coexistence agreement establishing the boundaries of each party’s trademark rights and the conditions under which both marks may be used in commerce. These agreements are regularly accepted by the USPTO as sufficient to overcome likelihood-of-confusion concerns.
If you have questions about the issues discussed in this article, contact the experienced attorneys at Revision Legal. We handle intellectual property, internet law, and business law matters for clients across the country. Contact us online or call us at 1-855-RL-LEGAL.
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