WHAT DOES ‘PUBLISHED FOR OPPOSITION’ MEAN?

Under U.S. Trademark law, 15 U.S.C. §1062(a), a trademark or service mark must be published for opposition before it can be registered on the Principal Register. This Publication and [short] time period (30 days) give someone who may be harmed by a registration of a federal trademark a way to oppose (or object to) the registration.

Any person who believes that he/she/it would be damaged by the registration of the mark and can prove both Standing  and Grounds may oppose a registration during this time period.

Note: Only potential Principal Registrations have opposition periods. Marks allowed for the Supplemental Register must be cancelled rather than opposed if any person who believes that he/she/it would be damaged by trademark having registered and can prove both Standing  and Grounds. There is no set time period to cancel a Supplemental Registration but it is a good idea to cancel before the mark has a chance to acquire distinctiveness or acquire any other rights in the mark or cancellation may be more difficult.


 15 U.S.C. § 1062  Publication

 (a) Upon the filing of an application for registration and payment of the prescribed fee, the Director shall refer the application to the examiner in charge of the registration of marks, who shall cause an examination to be made and, if on such examination it shall appear that the applicant is entitled to registration, or would be entitled to registration upon the acceptance of the statement of use required by section 1051(d) of this title, the Director shall cause the mark to be published in the Official Gazette of the Patent and Trademark Office:   Provided, That in the case of an applicant claiming concurrent use, or in the case of an application to be placed in an interference as provided for in section 1066 of this title, the mark, if otherwise registrable, may be published subject to the determination of the rights of the parties to such proceedings.


15 U.S.C. § 1063  Opposition

(a) Any person who believes that he would be damaged by the registration of a mark upon the principal register, including the registration of any mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may, upon payment of the prescribed fee, file an opposition in the Patent and Trademark Office, stating the grounds therefor, within thirty days after the publication under subsection (a) of section 1062 of this title of the mark sought to be registered.  Upon written request prior to the expiration of the thirty-day period, the time for filing opposition shall be extended for an additional thirty days, and further extensions of time for filing opposition may be granted by the Director for good cause when requested prior to the expiration of an extension.  The Director shall notify the applicant of each extension of the time for filing opposition.  An opposition may be amended under such conditions as may be prescribed by the Director. (b) Unless registration is successfully opposed— (1) a mark entitled to registration on the principal register based on an application filed under section 1051(a) of this title or pursuant to section 1126 shall be registered in the Patent and Trademark Office, a certificate of registration shall be issued, and notice of the registration shall be published in the Official Gazette of the Patent and Trademark Office; or (2) a notice of allowance shall be issued to the applicant if the applicant applied for registration under section 1051(b) of this title.


The current fee for a Notice of opposition, per class is $400.00 and the Notice must contain certain information in order to be accepted by the Trademark Trial and Appeal Board (TTAB). A Suggested Format for an opposition is provided by the USPTO at www.uspto.gov/web/offices/dcom/ttab/oppositionformat.pdf.   A Petition to Cancel has the same $400 filing fee per class.


30 Days Seems like a Short Time Period!

The actual time frame to oppose after publication is only 30 days (or more with an extension) but a trademark or trade name owner (or their attorney) who is diligent about protecting their rights can search for marks to oppose long before this period starts. A claim of likelihood of confusion is the most frequently encountered issue in Board (TTAB) inter partes proceedings (309.03(c) Grounds).  

The Opposition period is not just a formality to make sure the examiner did not miss a likelihood of confusion issue during examination. The USPTO only looks at the Right to Register a mark with respect to other federally registered or pending federal registrations during the examination of a mark before opposition. The Right to Use is much broader and incorporates common law rights as well as federal registration rights. The Right to Use a mark is not examined by the USPTO and can only be enforced by prior users of a mark who believe that a registration will damage their prior rights and protect those rights through opposition, cancellation or suing through the courts. An opposer may be an owner of a registered trademark, an unregistered trademark, or a trade name.

Carhartt Men Weight s 6" Force Leather Light Weight Waterproof Work Men Boot Brown Coated Leather 4a46b04




Leather
Imported
Synthetic sole
Shaft measures approximately 6\" from arch
Heel measures approximately 1.5\"
Light weight
Flexible sole

The Opposition period is not just a formality to make sure the examiner did not miss a likelihood of confusion issue during examination. The USPTO only looks at the Right to Register a mark with respect to other federally registered or pending federal registrations during the examination of a mark before opposition. The Right to Use is much broader and incorporates common law rights as well as federal registration rights. The Right to Use a mark is not examined by the USPTO and can only be enforced by prior users of a mark who believe that a registration will damage their prior rights and protect those rights through opposition, cancellation or suing through the courts. An opposer may be an owner of a registered trademark, an unregistered trademark, or a trade name.


The steps to successfully completing or defending from an opposition are difficult and involve understanding NOT JUST trademark law but also federal court procedures for admitting evidence, understanding discovery and how it works and other knowledge.  Not Just Patents works with small business to protect trademark rights and works to defend these rights within small budgets. Corporate giants have the budgets to oppose and cancel but do not always have the facts on their side. Let us take a look at the facts and see if your business has to just give in or if your business has a right to defend what you have worked for.


If you are just starting on obtaining a federal registration, we suggest our service and our method: Not Just Patents Five-Step Verification as part of a Plan for A Successful Trademark:

To Verify a potential trademark is strong, available to use, and ready to register, the process should be more than a direct hit federal search. To maximize the commercial strength and minimize the weaknesses of a trademark, a potential trademark user should:

1) Verify Inherent Strength,

2) Verify Right to Use,

3) Verify Right to Register,

 4) Verify the potential mark (as currently used) Functions As A Mark, and

5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing.

(*We don’t stop here but this is a good start. Call us if you want to plan for a strong mark.)


Call us at 1-651-500-7590  . We can help you go from wanting to protect your name to having a strong, legally protectable, successful trademark. If you have started to think of names or slogans that you would like to use, the timing is perfect to take all the right steps to file and protect your trademark. If you intend to use a name in the next year or so, the timing is perfect to plan the best way to protect that name and to reserve the name for future use.


Not Just Patents ®   and AIM  HIGHER® are a registered trademarks of Not Just Patents LLC for Legal Services on the Principal Register.

PublishedForOppositionTrademark.com


Not Just Patents®

Aim Higher® Facts Matter

What Does Published for Opposition Mean? Searching for Trademarks Published for Opposition Letter of Protest TMEP 1715 Steps for a Trademark Opposition Steps for a Trademark Cancellation TSDR Icons Suggested Format for Petition to Cancel Notice of Cancellation

Not Just Patents® LLC, PO Box 18716, Minneapolis, MN 55418  1-651-500-7590    WP@NJP.legal


Call 1-651-500-7590 or email WP@NJP.legal for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other pages and sites:      

Carhartt Men Weight s 6" Force Leather Light Weight Waterproof Work Men Boot Brown Coated Leather 4a46b04 - diflucan-fluconazole.website

Is my business name trademarkable? What is Trademark Intensity TMI? How do I build my trademark intensity?

Trademark e Search  Strong Trademark  Enforcing Trade Names

Common Law Trademarks Trademark Goodwill Abandoned Trademarks

Tm1b.com -Why use 1(b) filing basis?   Is the technology listed in your trademark registration obsolete?

Trademark Disclaimers Trademark Dilution TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Cease and Desist

Patent, Trademark & Copyright Inventory Forms

USPTO Search Method for Likelihood of Confusion

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

Section 8 Affidavit  How to Keep A Trade Secret

Decrease Vulnerability to Audit/Cancellation  Facts Matter

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

How much does it cost to renew a trademark?    

Patent or Trademark Assignments  Opposition Pleadings    

Oppositions-The Underdog    TTAB Discovery Conference Checklist

How To Answer A Trademark Cease and Desist Letter

Trademark Integrity: Are your IP assets vulnerable?

teas plus vs teas reduced fee

Trademark Refusals    Does not Function as a Mark Refusals

Insurance Extension  Advantages of ®  ApplyTM.com

How to Respond to Office Actions  Final Refusal

What are the requirements for a Design Patent?

Acceptable Specimen  Supplemental Register $224 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Trademark-Request for Reconsideration

Why Not Just Patents? Functional Trademarks   How to Trademark  

Carhartt Men Weight s 6" Force Leather Light Weight Waterproof Work Men Boot Brown Coated Leather 4a46b04

What Does ‘Use in Commerce’ Mean?    Opposition Defense

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Carhartt Men Weight s 6" Force Leather Light Weight Waterproof Work Men Boot Brown Coated Leather 4a46b04

Valid/Invalid Use of Trademarks     Trademark Searching

Adtec Men s 6 Inch Waterproof Steel-Toe Work Boot Dark Brown Bates Men s 8 Inches Tropical Seals Durashocks Work Boot Black Thorogood Men s American Heritage 8" Round Toe, MAXWear Wedge Safety Toe Boot Black Walnut , Golden Retriever Men s 2902 Wedge Boot Butternut Dr. Martens Men s Ironbridge NS Work Boot Black/Industrial Grizzly , Wolverine Men s W04328 Tremor Boot Brown Dr. Martens Men s Ironbridge NS Work Boot Teak , MuckBoots Chore Cool High Waterproof Work Boot Brown , Adtec Men s 9-Inch Steel-Toe Logger Boot Brown , Rocky Men s Ranger Steel Toe Insulated GORE-TEX Boots Brown Optimal Men s Safety Boot Steel Toe Boot Work Boot Composite Toe Boot Camo , Wolverine Men s Archer 8 inch Insulated Waterproof Hunting Boot Realtree Extra , Georgia Men s Giant Romeo Steel toe GS262 Work Boot Soggy Brown Florsheim Work Men s FE675 Steel-Toed Work Boot Black Wolverine Men s Rancher Round Soft-Toe Western Construction Boot Dark Brown , Timberland Field Lace-Up Boot (Toddler/Little Kid/Big Kid) Wheat , Iron Age Men s Hauler IA0194 Work Boot Brown , Thorogood Men s American Heritage 8" Classic Plain Toe, Safety Toe Boot Black Walnut Georgia Boot Men s Brookville 6 Inch Work Shoe Dark Brown Ariat Men s Workhog Pull-On Boot Aged Bark/Army Green Harley-Davidson Men s Zak ST Industrial Boot Black Caterpillar Men s 2nd Shift 6" Plain Soft-Toe Work Boot Honey , Twisted X Men s Pull-on Cowboy Work Boot Steel Toe - Mlcs006 Cognac , Viking Footwear Black Tusk Caulk Waterproof Steel Toe Boot Black/Orange Rocky Treadflex Composite Toe WP 8in Work Boot Dark Brown Goodyear Men s Darlington Soft Toe Work Boot Brown , Georgia Boot Men s Lacer Work Shoe Barracuda Walnut Georgia Boot Men s Georgia Giant G8374 Work Boot Brown John Deere Men s 11" Mossy Oak Camo Boot Walnut

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 TTAB Document Service  TBMP 309 Standing

Citable Examples and General Rules for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS, TEAS RF and TEAS plus  

Extension of Time to Oppose  Cease and Desist DIY

Bandolino Women s Evelia Slide Sandal Black Fabric RAISINGTOP Dressy Summer Sandals Dress Shoes Open-Toe Low Shoes Roman Platform Ladies Flip Flops Indoor Outdoor Black Oka-B Elle Licorice , Eco-daily Water Shoes Mens Beach Swim Womens Shoes Aqua Socks Pool Shoes for Surf Yoga Water Aerobics Barefoot Women Non-Slip Diving Shoes Blue-1 SoftWalk Women s Tillman Dress Sandal Tan Soft Nappa Leather , KENSBUY Women& Men s Water Shoes,Running,Beach Aqua,Fishing Leisure Sneakers Red , Ariat Men s Relentless Prime Work Boot, Brandy Bullhide, 12 E US Black Bullhide Olathe Boot Co. Mens Ride Ready Tan Orly Steer Hide Navy Veal Top Tan Propet Men s Cliff Walker Boot Bronco Brown Astral TR1 Junction Men s Water Hiking Shoe Dirt Brown , Sperry Top-Sider Women s Saltwater Wedge Tide Rain Boot Oat Trotters Women s Lyra Wide Calf Riding Boot Dark Brown Chooka Women s Fashion Duck Boot Canvas Grey , Dailyshoes Women s Mid Calf Zipper Slouch Suede Comfortable Boots Zebra Seude DailyShoes Women s Combat Style up Ankle Bootie Quilted Military Knit Credit Card Knife Money Wallet Pocket Boots Blue Denim Muk Luks Women s Quinn Winter Boot Brown , New! Women s Multicolor Mid Calf Lace up/Zip Military Combat Boot with Fold-Over Cuff naturalNN MVE Shoes Women s Open Toe Strappy Flat SandalslComfort Summer Cork SlidelFlipFlop Cheetah*b30 , Carol Shoes Fashion Women s Platform High Heel Over the Knee Boots Black Pleaser Women s Del2019-3/Spu/M Boot Slv Metallic Polyurethane/Slv Matte Nike Women s Air Zoom Fearless Flyknit Training Shoe White/Wolf Grey-hyper Grape , adidas Men s 360 Traxion Ftwwht/Dksimt Golf Shoe Footwear White/Footwear White/Core Black , Therafit Shoe Women s Sienna Side Zip Sport Casual Walking Shoe Black Cole Haan Women s Tali Bow Ballet Flat Flannel Blue by Betsey Johnson Women s Lucy Flat Ivory Satin DC Men s Villain Vulc TX Casual Shoe Black/White , Aravon Women s Bromly Oxford Fashion Sneaker Silver G.H. Bass & Co. Women s Skyler Oxford Peach NIKE Men s SB Check CNVS Skateboarding Shoes nk705268 402 Black/White DC Women s Heathrow IA Skateboarding Shoe White ,

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal  Trademark Opposition Timeline

What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks Trademark2e.com  What Can Be Trademarked  

Likelihood of Confusion 2d  TMOG Trademark Tuesday

Acquired Distinctiveness  2(f) or 2(f) in part

Merely Descriptive Trademarks  Merely Descriptive Refusals

Carhartt Men Weight s 6" Force Leather Light Weight Waterproof Work Men Boot Brown Coated Leather 4a46b04 - diflucan-fluconazole.website

ID of Goods and Services see also Headings (list) of International Trademark Classes

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Carhartt Men Weight s 6" Force Leather Light Weight Waterproof Work Men Boot Brown Coated Leather 4a46b04

Not Just Patents Often Represents the Underdog

 Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals   FilingforTrademark.com

Zombie Trademark  B-TMI.com-use trademarks to build value

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

Industrial & Construction Boots

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS database  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition  What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses


0
1
2
3
4
5
6
7
8

©2008-2018 All Rights Reserved. Not Just Patents LLC, PO Box 18716, Minneapolis, MN 55418.

Call: 1-651-500-7590 or email: WP@NJP.legal. This site is for informational purposes only and is provided without warranties, express or implied, regarding the information's accuracy, timeliness, or completeness and does not constitute legal advice. No attorney/client relationship exists without a written contract between Not Just Patents LLC and its client. Past performance is no guarantee of future results. Privacy Policy Contact Us

 

Letter of Protest