Notice of Publication
Obtaining trademark protection from the U.S. Patent and Trademark Office (USPTO) can take several months, but receiving a Notice of Publication is a sign that things are heading in the right direction. This signifies that your application has overcome its first major hurdle. Assuming there are no potential issues of consumer confusion, you are likely to receive federal registration within a few months.
Trademark Notice of Publication
When you file a trademark application, it takes about four months for an examiner to review your submission. They’ll check to ensure that your application meet all legal requirements and that there is no basis for refusal. If they have any concerns, you will receive an Office Action detailing the problems. Applications that have no issues, however, will be issued a Notice of Publication.
This notice informs the applicant that their trademark will be published in the Official Gazette. This begins a 30-day period in which concerned parties can oppose your registration. Only 2.8 percent of applications face opposition proceedings, but 44.8 percent of those oppositions are sustained.
To improve the odds of making it through publication, you should consider the following:
- Strength of trademark: Is your brand identifier inherently distinctive? Stronger trademarks are less likely to be opposed.
- Right to use: Perform a trademark search to ensure you have a right to use an identifier. If a likelihood of confusion is identified with a prior application, you may not receive a Notice of Publication.
- Meets legal requirements: Your application and brand identifier must meet the requirements set forth by the USPTO. There must be no grounds for refusal.
Receipt of a Notice of Publication isn’t simply another milestone in the trademark process. It signifies that a professional examiner found no issues with your application. Since internal reviews of examiners’ final decisions maintain a quality rating of around 98 percent, reaching publication is a good indicator that your brand identifier is registrable.
Intent to Use Trademarks
Receiving trademark registration requires that your brand identifier be used in commerce. Even if you’ve yet to engage in commercial use, though, you can still file an application based on an intent to use. This grants you an earlier filing date, and you’ll have six months to submit a Statement of Use showing actual use in commerce.
There are many differences between applications based on use and a bona fide intent to use, but both will still receive a Notice of Publication. Once your intent to use trademark is published, it will go through the same process as a traditional application. This means third parties with standing can still oppose registration of your brand identifier.
After Your Notice of Publication
If you get through the publication process and overcome any opposition, your trademark registration will be granted. This means you’ll have exclusive rights over your brand identifiers, but you’ll need to police misuse on your own.
Letter of Protest
Publication in the Official Gazette, however, isn’t the first exposure the public has to your application. Before a USPTO examining trademark attorney reviews your registration request, the submission will first be listed on the Trademark Electronic Search System (TESS). This creates the opportunity for interested third parties to try to block your brand identifier by filing a letter of protest.
Letters of Protest must be sent before a Notice of Publication is issued, and they’re meant to raise registrability issues with the examining attorney. The third party submitting the letter does not have to show that they’d be negatively affected by registration. They need only show a question of registrability that can be handled by the examiner on an ex parte basis.
The following issues are the most common reasons for a Letter of Protest:
- An allegation that a Likelihood of confusion exists a prior trademark.
- An allegation that the Brand identifier is either descriptive or generic.
- An inappropriate use of a registered trademark is occurring.
- Approval of the registration would create a false association.
When filing a letter of protest, evidence must be provided that demonstrates that a trademark is not registrable. The letter will be forwarded to the Deputy Commissioner. This official will decide whether the examining attorney even receives the notice. This makes it vital to include clear and convincing evidence that a Notice of Publication should not be issued.
Letters of Protest are usually only accepted prior to publication, but they may be considered at a future point if it’s shown that publishing the trademark in the Official Gazette was a clear error on the part of the USPTO.
The following issues cannot be handled through a Letter of Protest:
- Disputes of ownership.
- Common law trademark
- Claims of litigation without evidence.
A Letter of Protest’s sole purpose is to provide examiners with information they may otherwise overlook. With more than 450,000 applications coming in yearly, it’s understandable that some things may slip through the cracks. If such a letter is successful in hindering your application, you may need to amend certain aspects or face outright rejection.
In many cases, the best way to prevent a trademark from registering is to file a Notice of Opposition.
Once a Notice of Publication has issued, the only remaining hurdle is typically the opposition period. This month-long phase is when third parties with legal standing can oppose your trademark registration. To have legal standing, it must be shown that they will be negatively affected if a brand identifier is granted federal protection.
If a Trademark Opposition is filed, the case will proceed as with other trademark litigation though the process is more streamlined. The case will be in the Trademark Trial and Appeal Board (the TTAB) rather than a federal court. The case can be settled or withdrawn at any time.
The following are the most common reasons for a Notice of Opposition:
- A likelihood of confusion would exist. This is the most common cause.
- Trademark dilution of a well-known brand identifier may occur.
- The brand identifier is either merely descriptive or generic.
- A false connection, origin or sponsorship would be implied.
It’s also possible for a third party with standing to file an Extension of Time to Oppose. Any request for an extension to oppose must be made within the 30-day opposition period. Multiple requests can be made to ensure concerned parties have time to research the issue, but extensions cannot surpass 180 days. Those who fail to timely oppose a trademark application will have to file a Trademark Cancellation after registration instead.
Trademark Trial and Appeal Board
If someone opposes your trademark after a Notice of Publication has been issued, your case will end up before the Trademark Trial and Appeal Board. The time necessary to reach completion of a trial before the TTAB can depend upon their case load. In addition to oppositions and requests for extensions, the TTAB also handles around 2,500 cancellation requests and 3,400 appeals every year. The following structure of their process will give you a better idea of the potential timeline you may face.
- Notice of Opposition filed: This must happen within the 30-day opposition period.
- Answer filed by respondent: Applicants facing opposition must file a response to the TTAB within 40 days. Failing to do so can result in a default judgment against them.
- Discovery: Parties and their attorneys will engage in requesting information from each other. This step involves evidentiary gathering that could include witness depositions and expert testimony.
- Testimony period: Each side presents their arguments to the TTAB in an alternating fashion.
- Trial briefs: Each side files trial briefs in alternating fashion.
Since most cases are settled or withdrawn from the TTAB process, we take an aggressive stance from the beginning. For more information please see our Trademark Opposition page.
For any questions related to a notice of publication, please feel free to contact us.