During the application process for federal trademark registration, applicants may face challenges or issues in the form of United States Patent and Trademark (USPTO) Office Actions that require resolution before federal trademark application may proceed through the registration process. Once these issues are successfully resolved, or if no issues were raised in the first place, the USPTO examining attorney will approve the mark for publication in the Official Gazette and the applicant will receive a Notice of Publication from the USPTO.
The Notice of Publication provides the date on which the mark will be published for opposition; after that date, any party who believes that it may be damaged by the mark’s registration has thirty (30) days to formally take action through the USPTO.
During the publication phase of applications filed in the United States Patent and Trademark Office (USPTO) three outcomes are possible:
- An opposition is filed in the Trademark Trial and Appeal Board (TTAB), meaning that a third-party legally believes that they will be damaged by the mark’s registration. Owners of federal registrations and common-law trademarks are permitted to file Notices of Opposition.
- An Extension of Time to Oppose is filed, meaning that a third-party believes that they might be damaged by the mark’s registration and they would like additional time to assess the potential for harm, thereby requesting an additional, 30, 60 or even longer window to file a full Opposition in the Trademark Trial and Appeal Board (TTAB).
- Nothing happens, or in other words, no extension or time to oppose, and no opposition, has been filed. When this occurs, use-based application applications based on actual use of the mark in commerce will be issued certificate of registration. Intent to Use (ITU) applications will be a Notice of Allowance.
Owners of trademark applications entering the publication phase should be pleased as their registration process is nearly complete at this stage. About 95 percent of applications that reach the publication stage go uncontested without an opposition being filed.
If a federal trademark application in the USPTO faces challenges during the publication period through an Opposition in the Trademark Trial and Appeal Board, an Extension of Time to Oppose, or a cease and desist letter from a third party, important considerations involving substance and timing of a response should be reviewed with an experienced trademark attorney. If an application goes uncontested during publication, review of the formalities of the application before registration is issued is also advised to reduce the risk of obtaining a registration that is potentially vulnerable on technical or substantive grounds.
Author: David N. Sharifi, Esq. is a Los Angeles based intellectual property attorney and technology startup consultant with focuses in entertainment law, emerging technologies, federal trademark registration, and the “Internet of Things”. David has been recognized as one of the Top 30 Most Influential Attorneys in Digital Media and E-Commerce Law by the Los Angeles Business Journal. Office: Ph: 310-751-0181; david@latml.com.
The content above is a discussion of legal issues and general information; it does not constitute legal advice and should not be used as such without seeking professional legal counsel. Reading the content above does not create an attorney-client relationship. All trademarks are the property of L.A. Tech & Media Law Firm or their respective owners. Copyright 2017. All rights reserved.
