1. USPTO Trademarks
2. Why to Register Your Mark
3. Opposition Proceedings
4. Filing Oppositions and Extensions

USPTO Trademarks

USPTO trademarks provide protection on your mark so that others cannot use it. Specifically, the United States Patent and Trademark Office (USPTO), issues trademarks. While you need not obtain trademark protection over your mark, since you’ll have common law protection, there are many important reasons as to why you should register your mark.

Why to Register Your Mark

  • Registering your mark will provide you with added protection if it is registered. It provides notice to the public so they know that you have exclusive right to the mark.
  • There will be a legal presumption of your ownership to use the mark nationwide.
  • You’ll have the ability to bring an infringement case if someone else uses your mark.
  • You’ll be able to use your registration as a basis to obtain registration information in other countries.
  • You can file your registration with U.S. customs to prevent importation infringement for foreign goods.

Opposition Proceedings

1. Refusal based on relative grounds. If your trademark application is refused based on relative grounds, that means that the examining attorney believes that there is confusion with a mark, then you will be given a period of six months to rebut the refusal to accept the mark. There are several factors that are used to determine the likelihood of confusion, which include:

  • The similarity in the goods or services being provided
  • The similarity of the trade channels being used to import/manufacture/sell the goods
  • The clientele who would purchase the product
  • The fame of the market in which the product is being sold or the service is being offered, i.e. advertising, sales, etc.
  • The number of similar marks that are used for similar goods
  • The nature of the confusion, and the extent of it
  • The length of time in which the identical or similar marks have been used in the market, and whether or not any confusion has in fact taken place
  • The variety of goods in which the mark is used, i.e. household items, etc.
  • Any prior agreements entered into between the trademark holder and the applicant trying to register the similar mark. This can include consent between the parties, an assignment of the mark, or a written and signed agreement that is designed to preclude confusion.
  • Whether the confusion is de minimis or significant

2. Refusal based on absolute grounds. Your trademark application may also be denied if the mark is:

  • Not distinct, meaning that it is generic
  • Non-descriptive
  • Deceptive as to the type of goods or services that you are offering
  • A surname
  • Includes an insignia of the United States or some other foreign nation
  • Includes immoral or deceptive material, including certain beliefs and symbols.
  • Includes a portrait of a U.S. President or his widow, or a signature of a living individual

3. Refusal based on non-compliance. Such refusal would be based on the fact that you failed to comply with all of the requirements when submitting your application. This includes a fee, a listing of the goods/service, your name, your address, and an illustration of the mark. This type of refusal is rare as there are several prompts online that assist you when submitting this application. If, however, you do inadvertently leave out some information, the examining attorney is in charge of reviewing your application to ensure that all information is submitted. Therefore, if you do forget to include something, the examining attorney will send the application back to you requesting that you include the information. You will have six months to re-submit.

Filing Oppositions and Extensions

  • In order to file an opposition to a mark that was just registered, you will submit the opposition in the Trademark Official Gazette. It must be published within 30 days of the date the mark was initially published in the Gazette.
  • If the person wanting to oppose the mark needs an extension to file an opposition, he can request the extension up to 180 days from the date the mark was published; however, it cannot be filed beyond the 180-day mark. All extensions and oppositions can be filed electronically.
  • After the opposition is filed, this is a time for the parties to meet and attempt to resolve the dispute without the need for a formal legal proceeding.
  • Currently, of the over 200,000 oppositions, only approximately 3% resulted in actual legal proceedings.

If you need help with learning more about the USPTO trademark process, or filing an opposition to a registered mark, 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.