Publishing your mark puts your potential competitors on notice and provides a 30 day window for them to either oppose the trademark registration of your trademark or request an extension of time to file.
After your trademark registration application passes examiner review, you will receive a notice of publication, meaning that your application will soon be published in the Trademark Official Gazette, a weekly USPTO publication available to the public. Some important things to consider during the publication phase of your application include:
- our application does not always publish correctly and you may need to request the USPTO correct the errors;
- Applied for marks on the principle AND supplemental registers are both published in the Official Gazette, but only the applications in the primary register can be opposed; and
- If you have not filed proof of commercial use prior to this stage, you are not permitted to do so until after you receive a notice of allowance.
If a potential competitor observes your published trademark registration in the Official Gazette they may Road Closed Sign on Street Repair submit an official opposition to your application. This is often considered the best opportunity to proactively defend a potentially competing trademark registration because it is usually simpler to stop an infringing mark before it becomes official rather than after. However, oppositions, which are heard by the Trademark Trial and Appeal Board (TTAB), tend to conclude with one of 3 main outcomes:
- The opposition succeeds and the trademark registration is wholly or partially rejected;
- The opposition fails and the trademark proceeds towards registration; or
- The parties settle on an agreement such that either the opposition or the trademark application is withdrawn.
Although oppositions are uncommon they need to be treated very seriously by both the Applicant and the Opposer.
There are many defenses against an opposition, such as:
- Laches – the Opposer has not been sufficiently diligent in enforcing their trademark registration before now;
- Estoppel – the Opposer’s attempt to oppose the application is contrary or inconsistent with their prior conduct; and
- Acquiescence – the Opposer’s actions or inactions constitute a consent for Applicant’s use of the mark.
However, these defenses have limited value because they tend to focus on issues of actual trademark registration use whereas the TTAB focuses primarily on issues of trademark registration ability.
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