Published for Opposition: Everything You Need to Know
Published for opposition refers to the period before a trademark can officially be registered.3 min read
Published for opposition refers to the period before a trademark can officially be registered. During this time, companies and the public can object to the trademark's registration.
The Opposition Period
The opposition period is initially 30 days, always published on a Tuesday in the Trademark Official Gazette (TMOG), and ending on a Thursday, however, it's possible to extend the period for up to 90 days if the cause is stated.
Prior to appearing in the TMOG, a trademark application will appear on the Trademark Electronic Search System (TESS) on the United States Patent and Trademark Office (USPTO) website within several days of its submission. The application will remain there for a minimum of three to four months before being published for opposition.
Grounds for Trademark Opposition
Any person who believes they would be damaged by the registration of the mark may file an opposition in the Patent and Trademark Office by paying the prescribed fee and stating the grounds for the opposition.
The opponent could also represent the public at large since having two similar marks may be generally confusing to the public.
A person can initiate opposition proceedings for a variety of reasons:
- The trademark is too similar to an existing or previously registered trademark.
- The mark is descriptive or doesn't have distinct character.
- The trademark application was submitted in bad faith.
- The trademark may cause confusion or deceive the public.
- The trademark is illegal.
- The trademark is harmful or offensive to a particular group of people, including religious groups.
Any person who wishes to file a notice of opposition can file the necessary form along with the prescribed fee which is currently $400 per class. The opponent must specify if they are opposing all, none, or some of the goods and services being trademarked.
How Often Are Trademarks Opposed?
It's not often that trademarks are opposed, but opposition and cancellation proceedings can be a real threat once they have been instituted.
In a recent USPTO study, only 2.8 percent of 4 million applications published went through an opposition proceeding. Of these cases, however, the opposition was sustained approximately 44.8 percent of the time.
How Trademarkable Is Your Trademark?
Before filing a trademark registration application, you should check the validity of your trademark and make adjustments by double-checking the following elements:
- Trademark's inherent strength: Are the elements of your trademark distinct enough to be claimed for exclusive use? Make sure your trademark isn't merely descriptive (or worse, generic).
- Right to use: Make sure there's no likelihood of confusion with trademarks that have already been used or are currently in use.
- Right to register: Make sure the trademark meets the USPTO rules or registration and doesn't have grounds for refusal.
- Goods and services ID: Make sure the goods and/or services ID is neither too broad nor too narrow. Too broad of a description can lead to likelihood of confusion with another trademark. Too narrow of a description can result in narrow rights.
Dealing With an Opposition
If the registration of your trademark is opposed, or you'd like to oppose a trademark's registration, the steps to take are as follows:
- Notice of Opposition: The notice of opposition to the trademark is filed within four months of the trademark advertisement date.
- Counter statement: Within two months of receiving the notice of opposition, the applicant can file a counter statement. If the applicant doesn't take this step, they are assumed to have abandoned the application.
- Evidence Supporting Opposition: If a counter statement is filed by the applicant, the opponent will need to file an affidavit providing evidence supporting opposition; or, alternatively, the opponent could write to the Registrar stressing that they want to rely on the evidence stated in the notice of opposition.
- Evidence Supporting Trademark Application: After the opponent has filed evidence supporting opposition, the applicant has two months to file evidence supporting the application.
- Evidence in Reply: The opponent will then have one month to file additional evidence.
- Hearing: After taking the notice of opposition and evidence for and against the trademark into consideration, the Registrar will call for a hearing. Within 14 days of the hearing notice, the applicant and opponent must appear before the Registrar to decide whose case has more merit.
- Registration or Rejection: The trademark will be registered or rejected based on the Registrar's decision.
If you need help with a trademark published for opposition, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.