What does ‘Published for Opposition’ Mean
Under 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 a way and a time frame for a person or party to object to the registration if they believe that they would be harmed by the registration and if they believe that the mark is not entitled to registration. Not just anyone can object/oppose, only any person or entity who believes that he/she/it would be damaged by the registration of the mark and can prove both Standing and Grounds.
Trademarks are always published on Tuesdays in the Official Gazette for that week. Every Opposition period starts out at 30 days (4 weeks plus two days) and ends on a Thursday. A 30-day extension to file an opposition starts on the Thursday that the Opposition period ends and continues for another 4 weeks plus two days and ends on a Saturday. If there is a sufficient reason, otherwise known as cause, the extension of time can be made for 90 days and the cause must be stated.
Someone wanting to oppose who misses the opposition period can wait and file a Petition for Cancellation after the mark registers, if it does. Many intent-to-use applications fail to register because a Statement of Use is never filed. Extensions for Statement of Uses can be filed multiple times (up to two years time) so missing the opposition period can cause a long wait to cancel under some circumstances.
All, None, or Some
For each and every class in an application to be opposed, the opposer must choose whether it is opposing all, none, or some of the goods and/or services. If the opposer chooses to oppose some, but not all of the items in the class, it may edit (by "deletions only") the identification(s) of goods and services so that only the opposed goods or services remain.
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.
What Does it Cost To Oppose A Trademark?
The current fee to the USPTO for a Notice of Opposition (the opening complaint), per class is $300. (If you have an attorney your attorney would also charge a fee.) The USPTO does not charge additional fees after the complaint is filed even if the proceeding goes on for years or just weeks. The Notice of Opposition must contain certain information in order to be accepted by the Trademark Trial and Appeal Board (TTAB).
Many trademark oppositions are never answered (end in default) and the trademark applications go abandoned. About 75% of trademark oppositions end in the opening pleadings stages by default, withdrawal, or settlement. Less than 5% of trademark opposition go all the way through to a final trial decision. The cost of a trademark opposition in terms of attorney fees would usually depend on how far the proceeding went.
Either the skill level of trademark attorneys varies widely or some attorneys have really horrible luck with having the facts in their favor. (Facts do matter.) One attorney who advertises that he is a trademark opposition lawyer says that he has “two decades” of trademark experience and charges flat fees. His record shows that out of 46 trademark applications where he is attorney of record 36 are DEAD marks. Ultimately the goal of a trademark application/registration or opposition is to have your mark remain LIVE so the experience in this case and the flat fee do not reach the typical goal. It pays to shop around when your trademark is of value to you. Attorney records for applications and oppositions are fairly easy to check. We can help you check out other attorney records and compare them to Not Just Patents.
A federal registration on the Principal Register is not just a certificate of use that is obtained by filling out a form and paying fees, it is a property right (once granted) establishing not only legal rights but also legal liabilities.
About 30% of TEAS PLUS applications proceed to publication without an office action, meaning that 70% are refused for one reason or another. This figure, 30%, is an improvement over TEAS applications that have more problems with refusals because of more goods and services identification problems.
Read the disclaimer that the typical form filling service has on their web page-they say that using their service is not a substitute for obtaining good legal advice. That’s one reason why some form filling services are actually lawyer referral services so they can pull you in on free searches but end up feeding their lawyer referral business after your application gets refused. Some states are trying to shut down these form services for practicing law without a license. Unfortunately it is the applicants that suffer that lose their trademarks because of mistakes.
PLAN FOR A SUCCESSFUL, STRONG TRADEMARK
To verify a potential trademark is strong, is available to use, and is ready to register, the process should be more than a direct hit federal search by a service unfamiliar with trademark law. To maximize the commercial strength and minimize the weaknesses of a trademark, we start with these five steps:
1) Verify Inherent Strength (this avoids merely descriptive, geographically descriptive, likelihood of confusion and other office actions),
2) Verify Right to Use, (this avoids likelihood of confusion refusal office actions and others)
3) Verify Right to Register, (this avoids many types of refusals including merely descriptive, deceptively misdescriptive, geographically descriptive and others that can often be predicted)
4) Verify the potential mark (as currently used) Functions As A Mark, and (this avoids specimens refusals, trade name refusals, and others. The USPTO is looking for valid use not just any use of a mark.)
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. (This avoids office actions to correct incorrect IDs which can slow down a registration. Incorrect IDs may be corrected during the prosecution of a trademark if they do not materially alter the mark or the ID. Correcting problems before application saves time and money. Filing in a new class after an application has been submitted to cure a problem ID is the same price as a new application in that class.)
*We don’t stop here but this is a good start!
Call us at 1-651-500-7590 for a Strong Trademark. A Strong Trademark is Not Just a tool to increase sales to customers–it is also easier to sell to your investors & licensees. See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied and been refused.
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