Before a trademark is officially registered with the United States Patent and Trademark Office (USPTO), the pending application will be made available to the public. This provides any interested third party with the chance to oppose registration of the mark if they feel that it is improper or a threat to their business.
Timeline of Trademark Publication
Once your desired trademark is preliminarily approved by an examining attorney, the USPTO will then include your mark in a publication called the Official Gazette, which is compiled weekly. This allows third parties to easily view pending trademarks that could threaten their business and brand and ultimately provides them with the opportunity to oppose such marks before they are registered. There is a 30-day window from the date of publication in the Official Gazette for this process to take place.
Grounds to Oppose a Trademark
A third party may oppose the final registration of a trademark on the following grounds:
- The pending trademark is misdescriptive
- The pending trademark is generic
- The application was fraudulently filed or done in bad faith
- The third-party claims priority over the trademark that’s pending
- The trademark is too similar to that of the third party and could cause confusion
What Happens If Someone Opposes My Trademark?
If a third party challenges your pending trademark within 30 days following publication of your application, you will essentially be forced into a litigation process in order to defend your mark before the USPTO. Your attorney will help you evaluate the merits of the claim that the opposing party is making against you so that you can either fight for the mark or decide to drop your application all together if it appears you that you will not be successful. An important consideration in how to proceed is to know that if you expressly abandon or withdraw your application once an opposition has been filed it can have negative consequences that can be used against you in any future proceeding before the TTAB or another court.
If you decide to fight for your mark, you will have approximately 40 days to answer the opposition’s claim. From there, it may be possible to negotiate a settlement with the opposing party, possibly by narrowing the identification of the goods and services that your desired mark would cover, or by signing an agreement that would allow the parties to co-exist under limited circumstances.
If an agreement cannot be reached, you will enter the discovery phase of the proceeding. After discovery, and most likely some motion practice, each side presents their case in writing and a panel of three judges from the Trademark Trial and Appeal Board (TTAB) will hear your case and make a decision regarding your federal application.
If you filed your trademark without the assistance of an attorney and your mark is now facing opposition during the publication phase, we invite you to contact our trademark attorneys for help evaluating the merits of the claim against you. Simply call 888-666-0062 to schedule a consultation to discuss the specifics of your case and your next steps to resolve the issue.
DISCLAIMER: The information contained in this article is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney.