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
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
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
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 $300.00 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 $300 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.
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 PatentsFive-Step Verification as part of a Plan for A Successful
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:
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
(*We don’t stop here but this is a good start. Call us if you want to plan for a
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 ® is a registered trademark of Not Just Patents LLC with a USPTO
Federal Trademark Registration (R/N 3556868-service mark for Legal Services) on the
Principal Register. Aim HigherSM is a pending USPTO Federal Trademark Application
(SN 85834837-service mark for Legal Services).
Call: 1-651-500-7590 or email: email@example.com. 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.
Call 1-651-500-7590 or email firstname.lastname@example.org or ContactTrademark.com for
Responses to Office Actions; File or Defend an Opposition or Cancellation; Patent
or Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.
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