Key Takeaways

  • “Published for opposition” is a crucial phase in the U.S. trademark registration process where third parties may challenge a pending mark.
  • Trademarks are published in the Trademark Official Gazette (TMOG) for a 30-day opposition window.
  • Opposition can be based on legal grounds such as likelihood of confusion, descriptiveness, or bad faith.
  • The process includes filing a Notice of Opposition, exchanging evidence, and potentially attending a hearing.
  • Outcomes include approval, rejection, or amendment of the trademark application.
  • Proactive trademark searches and legal guidance can help reduce the risk of opposition.
  • UpCounsel provides access to experienced trademark attorneys who can assist with navigating opposition proceedings.

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.

What Happens After Publication Ends

Once the 30-day opposition window closes without any filed opposition or if any filed oppositions are resolved in the applicant’s favor, the USPTO will move forward with the registration process:

  • For use-based applications (Section 1(a)): The USPTO issues a certificate of registration.
  • For intent-to-use applications (Section 1(b)): A Notice of Allowance (NOA) is issued. The applicant then has six months to file a Statement of Use (SOU) or request a six-month extension.

It's important to note that if opposition is filed, the application will not advance until the dispute is resolved through the Trademark Trial and Appeal Board (TTAB).

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.

Who Can File a Trademark Opposition?

Opposition is not limited to direct competitors. Any party who believes they may be harmed by the registration of the mark may file an opposition. This could include:

  • Owners of similar trademarks who fear brand dilution or consumer confusion.
  • Companies with common law rights (unregistered but established trademarks).
  • Industry advocacy groups concerned about public interest or misleading marks.
  • Foreign trademark holders if they believe U.S. registration will infringe on their international rights.

These parties must show a real interest and a reasonable basis for believing they will be harmed by the mark’s registration.

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.

Tips to Avoid Opposition

While opposition is statistically uncommon, the impact of an opposition can be significant in time and cost. Applicants can proactively reduce the likelihood of opposition by:

  • Conducting a thorough trademark search before filing to check for similar existing marks.
  • Choosing a distinctive mark that avoids generic, descriptive, or geographically misleading elements.
  • Avoiding potential conflicts with well-known or famous trademarks.
  • Consulting with a trademark attorney to evaluate risk and review the application before submission.

These precautions can help ensure a smoother path through the publication and registration phases.

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:

  1. Notice of Opposition: The notice of opposition to the trademark is filed within four months of the trademark advertisement date.
  2. 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.
  3. 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.
  4. Evidence Supporting Trademark Application: After the opponent has filed evidence supporting opposition, the applicant has two months to file evidence supporting the application.
  5. Evidence in Reply: The opponent will then have one month to file additional evidence.
  6. 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.
  7. Registration or Rejection: The trademark will be registered or rejected based on the Registrar's decision.

TTAB Proceedings and Outcomes

If an opposition proceeds, it is handled by the Trademark Trial and Appeal Board (TTAB), which operates similarly to a court. Both the applicant and the opposer present arguments and evidence. The TTAB process includes:

  • Discovery: Both sides exchange information, documents, and testimony.
  • Trial phase: Legal briefs and possibly oral arguments are presented (no live testimony).
  • Decision: TTAB issues a ruling that either sustains (grants) or dismisses (denies) the opposition.

Possible outcomes include:

  • Sustained Opposition: The trademark application is denied.
  • Dismissed Opposition: The application continues toward registration.
  • Settlement: The parties may settle, which can involve amending the application, agreeing to limitations, or co-existence agreements.

After an Opposition Decision: What Comes Next?

Following the TTAB’s decision, either party has limited options:

  • Appeal to Federal Court: A dissatisfied party may appeal to the U.S. Court of Appeals for the Federal Circuit or initiate a civil action in district court.
  • Amend the Application: If allowed, the applicant may revise goods/services or disclaim parts of the mark to overcome opposition issues.
  • Refile: If the application is denied, the applicant can refile with changes or a new strategy based on the TTAB's decision.

Acting promptly after a TTAB decision is essential due to strict filing deadlines for appeals or reapplications.

Frequently Asked Questions

What does “published for opposition” mean in trademark law? It means the USPTO has approved your trademark for potential registration and is allowing the public 30 days to oppose it.

Can anyone oppose a trademark during this period? Yes, any party who believes they may be harmed by the registration can file an opposition, including competitors or common law mark holders.

What happens if no one opposes my trademark? If no opposition is filed within the 30-day period (or any extensions), your application proceeds toward registration or a Notice of Allowance is issued.

How much does it cost to oppose a trademark? Filing a Notice of Opposition with the USPTO currently costs $400 per class.

Can I still register my trademark if it was opposed? Yes, if the TTAB rules in your favor or if a settlement is reached, your trademark may still proceed to registration.

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.