What is a Trademark Notice of Publication?
Receiving a Notice of Publication for a trademark application sounds innocuous enough, but this notice carries important information that allows members of the public, for example, a competitor, that may seek to derail the registration of the applicant’s mark. Once you own a trademark registration, you may choose to monitor publication notices to protect your trademark.
Significance of the Notice of Publication
The process of registering a trademark is a journey full of potential opposition. After a trademark application is drafted and filed, it must then be examined by a trademark examining attorney at the United States Patent and Trademark Office (USPTO). If a trademark examining attorney determines that a trademark application complies with the statutes, rules, and fees required by the USPTO, the trademark will be approved for publication in the trademark Official Gazette, a weekly publication that is published every Tuesday, including federal holidays, and available to the public on the USPTO website.
Before publication in the Official Gazette, however, the trademark applicant will receive a notice of publication disclosing the date that the mark will be published, usually approximately two months after the examining attorney has approved the trademark application. This date carries significance because it marks the day that the trademark is “published for opposition.” What this means is that, the day the trademark is published in the Official Gazette, a 30 day window begins in which the public can file an opposition to the registration of the published mark. If successful, an opposition can prevent the trademark from being registered on the principle register. However, if this 30 day period ends with no oppositions filed, the trademark application will be able to move to the next stage toward registration.
Additional Resources to the Public
In addition to having access to Official Gazette, the public can also use a number of electronic watch services that monitor newly published marks to ensure that they are not similar to an already registered mark. These services monitor trademarks that have been published and then find and disclose the marks that may be similar or identical to marks that are already in use. These tools enable companies and individuals who own trademarks to easily keep track of would-be infringers and help them protect their own trademarks from being damaged where such damage may include dilution by blurring or dilution by tarnishment. Our attorneys can discuss trademark monitoring services with you.
How Can the Public Oppose a Trademark?
After a trademark is published in the Official Gazette any member of the public that believes he or she will be damaged by the registration of the mark on the principal register can oppose registration of the mark by filing a notice of opposition with the USPTO Trademark Trial and Appeal Board (TTAB). A Notice of Opposition will state the grounds on which the opposing party believes that the trademark should not be registered on the principal register. The TTAB is an administrative tribunal within the USPTO which functions similarly to a federal court in that they hear and decide adversarial proceedings between parties. During the opposition, each party may present evidence and witnesses to further their claims that the trademark should or should not be registered. Once all evidence is submitted and all of the oral arguments have been heard, the TTAB will issue a decision within about six months.
Time Extension for Filing Oppositions
If a party believes that he or she will be damaged by registration of mark, but needs more time to draft a notice of opposition, there is an option to file for a request to extend the time to oppose. This request must be filed within 30 days of the publication in the Official Gazette. A grant of this request will extend the filing period for an additional 30 days, but this may be extended even further for good cause and when an additional request is filed before the expiration of the last granted extension period.
If no opposition is filed, or if an opposition to the registration of the mark is unsuccessful, then the applicant’s trademark will advance to the next step of the registration process. An official notice of the next status of the application may take up to three to four months after the notice of publication is sent or after the failed opposition is decided upon.
Cancellation of Trademarks
If a member of the public believes he or she will be damaged by the registration of a mark that has been published, but missed the 30 day window for opposition, he or she may still be able to remove the damaging trademark from the principal register through a cancellation proceeding. A cancellation proceeding functions much the same as an opposition meeting as they are both contested before the TTAB. It is important to note, however, that once five years have passed, a trademark owner can file for incontestability of their trademark. This precludes some grounds for cancellation such as likelihood of confusion. Therefore, if a mark is causing damage and it was published outside of the opposition window, it may be imperative to institute a cancellation proceeding as soon as possible.
If you have questions about registering your own mark or if you feel that you might be harmed by the registration of another’s mark, get in contact with one of our trademark lawyers at TraskBritt today.
Article written by David T. Ostler