Once the US Patent and Trademark Office (USPTO) approves your trademark registration application, it then enters the Trademark Publication Phase of the process. During this 30-day period of time, the USPTO publishes the application in the USPTO’s Official Gazette. Third-party trademark owners can then review the pending application to scrutinize for issues. The goal of publication, therefore, is to give others a chance to oppose the registration if they believe that it harms their rights.
Harm can include dilution of a registered mark’s value through blurring or tarnishment. Consumer confusion about the source of goods or services also causes harm. A proposed registration that mocks or disparages another mark can harm that mark’s owner as well.
A third-party trademark owner has 30 days from publication to file a Notice of Opposition (or a request to extend that deadline).
What Is a Notice of Opposition?
A Notice of Opposition is a legal filing that stops a pending trademark registration. The Opposition must briefly explain how the registration would cause harm and the legal grounds for opposition. The filer must have a real interest in the case, not just personal dislike of the mark.
Common grounds for opposition include claims that the mark:
- will likely confuse consumers,
- falsely suggests ownership by the filer,
- is not in use in interstate commerce,
- disparages the filer’s mark,
- is merely descriptive or generic,
- or meets other valid legal reasons.
What Happens After Filing a Notice of Opposition?
The applicant has 40 days to respond to the Opposition. If the applicant does not respond, the USPTO abandons the application.
A timely answer starts a process before the Trademark Trial and Appeal Board (TTAB). The TTAB process looks like other federal litigation. Both parties exchange information and evidence during discovery. They may also submit briefs and request oral arguments.
After this process, the TTAB issues a decision. Either party may appeal that decision to the U.S. Courts of Appeal.
Long story short, if someone files an Opposition in your trademark registration proceeding, you are in litigation. It is essential that you have retained an experienced trademark attorney to ensure your best odds of success!
The Bottom Line on the Publication Phase
Trademark registration is more than filling out a form. A cheap online filing service can lead to costly litigation later. Hiring a knowledgeable trademark attorney from the start is a better choice.
A skilled attorney can run a proper clearance search before you file. This search helps you avoid problems that could lead to an opposition. It also saves you time, money, and stress later.
If you need to register your trademark, file an opposition, or respond to one, contact us.
Noble Path Legal PLLC is a boutique U.S. law firm in Metro Detroit. We help businesses nationwide with trademark registration, renewal, monitoring, and USPTO Office Action responses.
We provide virtual consultations, personal service, and the expertise to improve your chance of success.
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