You’ve meticulously crafted your brand, designed a unique logo, and finally filed your trademark application. Months later, you receive notice that your trademark has been “published for opposition.” What does this mean? Should you be worried?
This article breaks down the trademark opposition process, including publication, on the road to trademark registration.
What is Trademark Publication for Opposition?
In the United States, after the United States Patent and Trademark Office (USPTO) examines and approves your trademark application, it is published in the Trademark Official Gazette (TMOG – https://tmog.uspto.gov/). This weekly online publication announces to the public that your trademark is on its way to registration. This is the “publication for opposition” phase.
Why is it Important?
The opposition period exists to allow third parties the opportunity to object to your trademark registration. Anyone who believes they would be harmed by your trademark registration can bring a trademark opposition, formally known as a Notice of Opposition. This starts a trademark opposition proceeding.
Who Can Oppose a Trademark Publication?
Any party who believes they will be damaged by the trademark registration can file a trademark opposition during the publication period. This could include:
- Owners of similar trademarks: Businesses with prior registered or common law rights to a similar mark for similar goods/services.
- Businesses with similar names: Even if not trademarked, a company with a similar name may oppose if they can demonstrate potential confusion.
- Industry groups: Organizations representing a specific industry may oppose if they believe your trademark could harm the industry.
Often times, trademark opposition attorneys file and defend oppositions.
Are Trademark Owners Notified When an Application is Published for Opposition?
The USPTO does not automatically notify trademark owners when a potentially conflicting trademark application is published for opposition. It is the responsibility of trademark owners to proactively monitor new applications. Trademark owners have the obligation to file a trademark opposition.
This lack of notification places the onus on brand owners to be vigilant. Failing to oppose a similar mark during the opposition period can have significant consequences, including:
- Consumer confusion: Two similar marks in the marketplace can mislead consumers, diluting your brand and potentially leading to lost sales.
- Weakened enforcement: Allowing a similar mark to register can make it harder to enforce your own trademark rights in the future.
- Loss of rights: In extreme cases, failing to oppose could even lead to the loss of your own trademark rights.
How to Monitor for Potential Conflicts:
- Trademark Electronic Search System (TESS): The patent and trademark office’s online database allows you to search for similar marks.
- Private search services: Several companies offer trademark watching services, alerting you to potentially conflicting applications.
- Professional assistance: Trademark attorneys can conduct comprehensive searches and advise you on potential oppositions.
By actively monitoring trademark applications, you can identify and oppose potentially conflicting marks.
Grounds for Opposition
There are various reasons why someone might oppose your trademark application. Common grounds include:
- Likelihood of confusion: This is the most common reason. The opposer must prove that consumers are likely to be confused about the source of goods/services due to similarities between your mark and theirs.
- Descriptiveness or genericness: If your mark merely describes the goods/services or is a generic term, it can be opposed.
- Prior registration: An opposer with a prior registration for a similar mark for related goods/services has grounds for opposition.
- Fraudulent application: If your application contains false or misleading information, it can be opposed.
How to Oppose a Trademark Publication
If you come across a published trademark that you believe infringes on your rights, you can file a Notice of Opposition with the Trademark Trial and Appeal Board (TTAB) within 30 days of the publication date. This initiates a legal proceeding similar to a court case.
What Happens After an Opposition is Filed? What Does a Trademark Opposition Proceeding Entail?
If your trademark application faces opposition, understanding the process and associated timelines is crucial for effective navigation. Here’s a breakdown of the key stages:
1. Notice of Opposition: The opposing party files a detailed Notice of Opposition with the TTAB within 30 days of your mark’s publication. This document outlines their legal grounds for opposition and the requested relief.
2. Answer: You have 40 days to file an Answer to the Notice of Opposition, responding to the opposer’s claims and asserting your defenses. Failure to respond can result in default judgment against you.
3. Discovery: Both parties engage in discovery, gathering evidence to support their arguments. This may involve exchanging documents, taking depositions, and serving interrogatories. Discovery typically lasts for several months.
4. Trial: The case proceeds to trial before the TTAB. Evidence is presented, and witnesses may testify. Instead of a traditional courtroom trial, evidence is submitted in writing during designated “testimony periods.” Parties submit their own evidence, and parties can request oral arguments.
5. Decision: After reviewing the evidence and arguments, the TTAB issues a written decision, either sustaining or dismissing the opposition. This can take several months.
6. Appeal: The losing party can appeal the TTAB’s decision to the Federal Circuit Court of Appeals.
Timelines:
The entire opposition process can take anywhere from several months to a few years to conclude. Factors influencing the timeline include:
- Complexity of the case: Trademark oppositions involving extensive evidence or complex legal arguments tend to take longer.
- Discovery disputes: Disagreements during discovery can lead to delays.
- TTAB workload: The TTAB’s caseload can affect the scheduling of hearings and issuance of decisions.
- Appeals: Filing an appeal adds significant time to the process.
Importance of Legal Representation:
Navigating the trademark application and opposition process is complex and requires legal expertise. Engaging an experienced trademark attorney is highly recommended to protect your rights and effectively present your case before the TTAB. Federal law applies to procedural and evidentiary matters, and knowledge of such law can be critical.
Recap of the Trademark Application Process and Timeline
The journey of a trademark application from filing to registration can be a lengthy one, often taking 12-18 months. Here’s a simplified timeline:
Filing: You submit your application to the USPTO, including the mark, goods/services, and filing basis. This can take a few weeks to prepare, ensuring accuracy.
Examination: A USPTO examining attorney reviews your application for compliance with legal requirements. This can take 3-6 months. You might receive office actions requiring clarification or amendments. An office action can cite a variety of issues, and some are complicated. Successful examination concludes when the application is approved for publication.
Publication: If approved, your mark is published in the Trademark Official Gazette (TMOG) for 30 days. This allows others to oppose your registration.
Opposition: If someone opposes, a legal proceeding ensues before the Trademark Trial and Appeal Board (TTAB), potentially adding months or years to the process.
Registration: If no opposition is filed, or if you prevail in an opposition, your mark registers. This usually occurs about 3 months after publication.
Maintenance: To keep your registration active, you must file specific documents and pay fees at regular intervals after registration.
Factors influencing the timeline:
- Filing basis: Whether you file based on actual use in commerce or intent to use affects the timeline.
- Complexity of the mark: Unique marks are faster to register than descriptive ones.
- Backlog at the USPTO: Processing times can vary depending on the workload of the particular examining attorney.
- Office actions: Responding promptly to office actions prevents delays.
- Oppositions: If an opposition is filed, the timeline extends significantly.
How to Protect Your Trademark
- Conduct a thorough search: Before filing your application, perform a comprehensive trademark search to identify potential conflicts.
- Monitor the TMOG: Keep an eye on the TMOG for potentially conflicting marks.
- Be prepared to respond: If someone opposes your trademark, consult with an attorney and be prepared to defend your application.
Beware of Trademark Scams: Fake Invoices and Deception
Unfortunately, the trademark application process can attract scammers seeking to exploit applicants. One common tactic involves sending fake invoices related to the publication for opposition phase. These invoices may appear official, using language that mimics patent and trademark office communications. They often demand payment for unnecessary or nonexistent services, such as “registration in an international trademark database” or “priority filing.”
Tips to Avoid Scams:
- Scrutinize invoices carefully: Compare them to official USPTO communications. Look for inconsistencies in logos, formatting, or contact information.
- Verify any requests for payment: Contact the USPTO directly to confirm the legitimacy of any invoice.
- Be wary of unsolicited emails or phone calls: Scammers often use these methods to pressure applicants into paying.
- Report suspicious activity: If you encounter a potential scam, report it to the USPTO and the Federal Trade Commission (FTC).
By staying informed and vigilant, you can protect yourself from these scams and ensure a smooth and legitimate trademark application process.
Frequently Asked Questions:
1. Can I oppose a trademark publication myself?
While it’s possible to file a trademark opposition yourself, it’s highly recommended to consult with an experienced trademark attorney. The process is complex and requires legal knowledge and strategy.
2. How long does trademark opposition take?
The opposition process can take anywhere from several months to a few years to resolve, depending on the complexity of the case and whether it proceeds to trial.
3. What if I miss the trademark opposition deadline?
If you miss the 30-day deadline, you may lose your right to oppose the trademark. However, it is possible to file for an extension of time to oppose under certain circumstances.
4. What are the risks of filing a trademark opposition?
The opposing party may countersue you, alleging that your own trademark is infringing on theirs. This can lead to legal battles and significant expenses. Denial can, in some cases, be precedential.
5. How do I know if I should oppose a trademark publication?
Consider factors like the similarity of the marks, the relatedness of the goods/services, the strength of your own mark, and the potential harm to your business. Consult with a trademark attorney to assess your options.
6. What happens after opposing a trademark publication?
After filing the Notice of Opposition, the case proceeds through a discovery period, evidence exchange, and potentially a hearing before the trademark office.
7. Cost of opposing a trademark registration?
The cost can vary significantly depending on the complexity of the trademark opposition case and the attorney’s fees. Expect to spend several thousand dollars, at a minimum.
By understanding the trademark opposition process, the publication period, and taking proactive steps to protect your brand, you can navigate this crucial stage of a trademark application with confidence.
