Published for Opposition
Once approved by an examining attorney at the U.S. Patent and Trademark Office (USPTO), your trademark is published for opposition. This opens a 30 day window for third parties to oppose your application.
Anyone filing for trademark protection could encounter a Notice of Opposition. While this can prolong the process of registering a trademark, you should never consider it the end of the road. While some oppositions are valid, many are not.
The World Intellectual Property Organization reports that about 400,000 trademark applications are filed each year, and an increasing number of these applications are also facing opposition with about 7,000 filed per year. This occurs when a third party believes that your trademark may cause them damage.
Not just anyone can oppose a trademark. The opposer must prove they have standing to do so by showing they would be affected by its registration. Trademark monitoring is a common way to learn about a conflicting trademark being filed.
There are various reasons a third party may claim standing to oppose. They include:
- A proposed trademark may cause a likelihood of confusion due to its similarity to an existing registration.
- Protection is sought over a generic or merely descriptive term or design.
- A well-known brand identifier may lose value through trademark dilution.
- Someone is attempting to register a surname.
- False sponsorship or origin or connections are implied by the application.
While trademark infringement often ends up in federal courts, this isn’t the case with a trademark opposition. If a third party opposes a registration, the applicant can file an answer in response to the notice. Once this has been done, a process very similar to litigation begins. Instead of taking place in a courtroom, however, the proceedings are handled by the Trademark Trial and Appeal Board (TTAB).
The trademark opposition process can add significant time to your registration period. This is especially the case if the disagreement reaches the trial stage of the TTAB. Fortunately, a very small percentage of oppositions ever reach the final decision stage of a TTAB hearing. This is because the involved parties can choose to settle the manner on their own.
Having your brand identifier published for opposition means the examining attorney approved your application. It doesn’t mean, however, that no issues exist. If someone opposes your trademark application, you’ll need to defend your rights before they are federally protected.
How Long is a Trademark Published for Opposition?
While it will take a few months for an examining attorney to approve your application for publication in the Official Gazette, once this occurs, third parties have only 30 days to file a Notice of Opposition. If they fail to do so, trademark cancellation at a future date may be their only recourse.
Third parties also have the option to request an extension of time to oppose. This means they’ll have more time to review their options before filing a notice. A 30 day extension requires no fee, and the USPTO will grant a 90 day extension with the payment of a $100 government fee. This does not constitute an official opposition, so your trademark will still register until a opposition is filed during the time allowed to oppose.
Even if an official Notice of Opposition is filed, it’s important not to panic or abandon your attempts at registration because only 3 percent of oppositions make it to trial briefs. While extensions do lengthen how long a trademark is published for opposition, they’re often just temporary nuisances that eventually subside since many companies that file requests to oppose eventually don’t even file an opposition.
Trademark Steps and Timeline After Publication
If you manage to avoid an opposition or extension request, the trademark steps and timeline after publication become straightforward.
- Pre-publication: It can take three to four months for an examining trademark attorney to review your application and publish it for opposition.
- Opposition period: It’s only during this 30-day period that third parties can file an opposition or extension request.
- Registration issues: Around three to four months after your trademark is published for opposition, you’ll receive confirmation of registration.
- Filing of Section 8 declaration: You must file a declaration showing continued use of your brand identifier in commerce between five and six years following registration.
- Filing of Section 9 renewal: You must renew your trademark every ten years following registration. An additional Section 8 declaration must be submitted simultaneously.
This timeline is based on registrations that are filed based on current use in commerce. If you file an Intent to Use Trademark, your timeline after publication can vary. You’ll receive a Notice of Allowance rather than the registration issuing. This occurs within about 2 months of clearing publication, and it serves as a six-month warning to use your brand identifier in commerce.
If you are unable to prove bona fide use in commerce during this period, you can request an extension. It’s only after you’ve submitted a Statement of Use along with sample specimens, though, that you can be granted registration.
How to Oppose a Trademark
Oppositions are filed through the Electronic System for Trademark Trials and Appeals (ESTTA). When filing, the opposer must explain why it has a legitimate interest in the outcome of a trademark registration. You must also include the necessary filing fees (i.e. $400 per class) for your request to be processed.
Prior to the opposition period, a potential opposer can submit a Letter of Protest which goes to the attorney examining the trademark application instead of the TTAB. The most common reasons that a protest letter will be accepted are:
- Likelihood of confusion with a registered or pending trademark.
- The proposed trademark is generic or merely descriptive.
- The trademark creates a false association with another trademark.
A Letter of Protest should be submitted as soon as possible after the trademark is filed and definitely prior to a trademark being published for opposition. Letters received after this point will have to showcase a clear error by the examining attorney. No protests are accepted after the opposition period has passed. Once publication has occurred, it’s typically best to file a Notice of Opposition and pay the required fee.
Once an opposition is filed, the applicant has 40 days to respond with an answer. If they fail to do so, the opposer will automatically win and the trademark will abandon. This means they are granted no federal protections over their applied-for registration. Keep in mind that they may still have common law trademark rights. If an answer is filed, we recommend serving discovery requests at the earliest opportunity. If the case proceeds through the discovery phase, it will then proceed to the testimony phase and trial briefs.
Trademark Opposition vs Cancellations
When a trademark is published for opposition, it can only be opposed during the 30-day period or any extensions granted by the USPTO. Once this time has passed, a Petition to Cancel will be your only recourse. A successful trademark cancellation will invalidate a brand identifier that’s already been placed on the federal register.
Just as is the case with oppositions, you must first prove that you have legal standing to file a cancellation petition. If you file within five years of registration, the grounds for cancellation are the same as those for opposition (e.g. likelihood of confusion). After the five-year mark, your options for cancellation are reduced.
These are still grounds for trademark cancellation after five years including:
- A likelihood of confusion exists.
- Trademark genericization has occurred.
- Legal abandonment has occurred.
- Fraud occurred during registration.
- The trademark suggests a false relationship or is disparaging.
- A lack of control has been exhibited over the trademark.
If for some reason a cancellation cannot be filed, then filing a lawsuit in federal court remains on option. Unlike trademark litigation, you will not receive damages or attorney’s fees even if a cancellation is granted. This is why many brands who experience infringement will opt to file a case in federal court.
Responding to Trademark Oppositions
If someone objects after your trademark is published for opposition, you’ll receive a notification that includes your deadline to answer which will be 40 days. Once you’ve filed an answer, the case will follow the following process until someone gives up or a settlement is reached:
- Discovery: This period is when evidence related to the case is gathered. Each side can request information from the other. Expert testimony and depositions may be taken. A discovery conference begins this phase.
- Motion: the parties may have an opportunity to win the case outright with a motion for summary judgment.
- Testimony: Alternating periods of evidence presentation take place. The opposer goes first, followed by the trademark applicant. The opposer then has an additional 15 days to rebut.
- Trial briefs: The applicant and opposer submit alternating case briefs to the TTAB.
- Oral arguments: While these are not required, either side can request that oral arguments take place as an evidentiary supplement.
- TTAB decision: It typically takes about six months for the TTAB to issue a decision once all evidence and oral arguments have taken place.
There are a variety of defenses you can use if someone files a Notice of Opposition against your application. Your specific defense will depend heavily upon the claims made by the third party. This is what you’ll build your case around. The most common reason for an opposition is a claim of likelihood of confusion. When a likelihood of confusion is asserted as grounds for opposition, you’ll need to show that consumers are unlikely to mistake the two brands in question.
The following are examples of how a claim of consumer confusion can be defended against:
- Demonstrating that consumers wouldn’t confuse the trademarks (e.g. via consumer surveys).
- Proving there is no relation to the differing products or services.
Please contact us if you have an issue related to a trademark published for opposition.