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.

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Leather
Imported
Made in USA or Imported

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.

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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:      

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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  

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What Does ‘Use in Commerce’ Mean?    Opposition Defense

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

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Valid/Invalid Use of Trademarks     Trademark Searching

Style & Co. Womens Astarie Closed Toe Mid-Calf Fashion Boots Black , 5.11 Tactical Women s A.T.A.C. 8" Shield ASTM Boot Black , Charm Foot Women s High Heel Hollowed-Out Chic Lace Summer Boots White Sfnld Women s Elegant Round Toe Platform Beaded Mid Calf Slouch High Stiletto Heel Boots White Durango Women s DRD0166 Western Boot Vintage Brown Carolbar Women s Hollow Out Fashion Casual Low Heel Summer Boots Beige La Canadienne Women s Vogue Suede Boot Black Propét Women s Madison Tall Zip Winter Boot Espresso , Funtasma by Pleaser Women s Splendor-130 Mid-Calf Boot Black Microfiber , Carolbar Women s Comfort Fashion Simple Buckle Zipper Wedge Heel Knee High Tall Boots Black , Tahari Women s Ta-Serena Black/Tan Black Durango Women s DRD0208 Western Boot Brown Khaki , Chooka Women s Mid-Height Memory Foam Rain Boot Olive Stuart Weitzman Women s Metermaid Mid Calf Boot Black Patent , La Canadienne Women s Emilia Ankle Boot Black Forever Link Mango-92 Women s Round Toe Low Heel Mid Calf Knit Trim Combat Boots Shoes Brown G4U Women s Rain Boots Multiple Styles Color Mid Calf Wellies Buckle Fashion Rubber Knee High Snow Shoes Grey Plaid , UGG Women s Breida Waterproof Snow Boot Black Cobb Hill Women s Bethany Boot Almond Leather Summerwhisper Women s Trendy Faux Suede Fur Lace up Round Toe Flats Warm Fleece Lined Mid Calf Snow Boots Shoes Black Jiu du Women s Block Heel Waterproof Rain Boots and Garden Round Toe Fashion Rain Shoes Leopard Print Pvc Blue Berry EASY21 Women Knee High Riding Boots Camel21 Bos. & Co. Women s Freddy Snow Boot Dark Grey Vintage Monza Leather , Women Autumn Lace Peep Toe Boots Mid-Calf Summer Boots Crochet Hollow Out Chunky Heels Long Boots Black , Propet Women s Tessa Boot & Oxy Cleaner Bundle Brown Brinley Co Womens Regular and Wide Calf Round Toe Faux Leather Mid-Calf Wedge Boots Black Women s Mid Calf Boots Strappy Buckles Platform Sexy High Heels Booties Leopard IDIFU Women s Comfy Low Wedge Heels Hidden Inside Lace Up Martin Boots Mid Calf Booties Black Breckelle s Women Trooper-14 Boots Black

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

SITAILE Men Women Breathable Sport Sandals Outdoor Athletic Leather Shoes Lightweight Casual Beach Sandals Brown , Bates Men s 8 Inch Leather Nylon Side-Zip Uniform Boot Black , Timberland 8" Premium Men s Boot Wheat Nubuck Carhartt Men s 4" Romeo Waterproof Breathable Non Safety Toe Pull-On Boot CMS4100 Dark Brown Oil Tanned Wolverine Men s Ranchero Steel-Toe Wellington Construction Boot Summer Brown , KEEN Men s Targhee EXP Mid WP-m Hiking Boot Raven/Inca Gold Under Armour Men s Post Canyon Low Waterproof Maverick Brown (100)/Black , Hishoes Men and Women Ultra-Soft Quick Drying Aqua Water Shoes Lightweight Walking Sneakers Summer Anti-Slip Hiking Shoes Green Danzcue Womens Canvas Lace up Jazz Boot Shoes , L-RUN Girls /Women s Canvas Ballet Dance Shoes/Ballet Shipper/Yoga Shoe ~50 Shades Of Bronze Dance Dress Shoes Collection, Comfort Evening Wedding Pumps: Women Ballroom Shoes For Latin, Tango, Salsa, Swing, Theather Art by Party Party (2.5" & 3" Heels) , Beeagle Womens Mens Unisex Clogs Comfortable Lightweight Walking Garden Shoes Slippers Quick Drying Sandals 36-45 Red Rampage Womens JELIANA Round Toe Mid-Calf Combat Boots Black Smooth , Mavirs Knee High Boots, Women s Round Toe Thigh High Over The Knee Boots Stretch Suede Flat Heel Tall Boots Dark Red-3cm , Ellie Shoes Women s 253-Rebecca Lace Heel Boot White , Comfortview Women s Wide Elliot Mules White Show Shine Women s Chic High Heel Stilettos Platform Long Boots Black , Shenn Women s Round Toe Knee High Punk Military Combat Boots Wine Red , adidas Women s W Climacool Knit Golf Shoe Chalk Purple/Blue/Coral Lucky Brand Women s Pembe Knee High Boot Brindle , Alfani Womens Viollah Closed Toe Knee High Fashion Boots Steel Propet Women s Cameo Flat Navy New Balance Men s Mrl247ko Olive FRYE Men s Ludlow Low Tennis Shoe Cognac Adidas Performance Men s Adipure 360.3 M Training Shoe Equipment Blue/Black/Collegiate Navy , Vans Men s Slip-on(Tm) Core Classics Black Off White Checkerboard , Converse Pro Leather Mid Mens Skateboarding-Shoes 157690C Medium Olive , Vans Unisex Classic Slip-On (Suede) Skate Shoe Hibiscus/True White DC Men s Trase TX Unisex Skate Shoe Dark Red Vans Kids Classic Slip-On (Little Big) (Checkerboard) Black/True 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

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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

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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?

Mid-Calf

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


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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

 

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