Receiving a Notice of Publication for a trademark application may appear benign. Still, it contains critical information that permits public members, such as a rival, to try to sabotage the applicant’s mark’s registration. You can select to monitor publication notices to safeguard your trademark once you have a trademark registration.
Significance of the Notice of Publication
The route to registering a trademark is fraught with potential adversaries. After drafting and filing a trademark application, it must be evaluated by a trademark examining attorney at the US Patent and Trademark Office (USPTO). Suppose a trademark examining attorney determines that a trademark application complies with the USPTO’s statutes, rules, and fees. In that case, the trademark will be approved for publication in the Trademark Official Gazette, a weekly publication available to the public on the USPTO website every Tuesday, including federal holidays.
However, before the mark is published in the Official Gazette, the trademark applicant will get a notice of publication revealing the publication date, which is normally two months after the examining attorney approves the trademark registration. This date is significant since it signifies the “publication for the opposition” of the trademark. This implies that the public has 30 days from the day the trademark is published in the Official Gazette to register opposition to the registration of the published mark. An objection can prevent a trademark from being registered on the principal register if it is successful. If no oppositions are lodged by the conclusion of the 30 days, the trademark application can proceed to the next step of the registration process.
Public Access to Additional Resources
In addition to having access to the Official Gazette, the public can use several electronic watch services to check that newly published marks are not identical to those previously registered. These services track trademarks that have been published and then identify and reveal similar or identical marks to those currently in use. These tools simplify organizations and people who own trademarks to keep track of potential infringers and safeguard their logos from becoming tarnished or blurred. Our trademark attorneys may talk to you about trademark monitoring services.
How Can the General Public Object to a Trademark?
After a trademark is published in the Official Gazette, any public member who feels the registration of the mark on the primary register would do them harm can file a notice of opposition with the USPTO Trademark Trial and Appeal Board (TTAB). The Notice of Opposition will state the grounds for the opposing party’s belief that the trademark should not be registered on the primary register. The TTAB is an administrative tribunal within the USPTO that hears and decides adversarial hearings between parties, much like a federal court. Each side may offer facts and witnesses to support their views that the trademark should or should not be registered during the opposition. The TTAB will give a ruling within six months after all material has been presented and all oral arguments heard.
Time Extension for Filing Oppositions
If a party feels that registration of a mark would harm them but requires more time to create an objection notice, they can request to extend the period to oppose. This request must be submitted within 30 days of the Official Gazette’s publication. If this request is approved, the filing time will be prolonged for another 30 days, although it may be extended further for a good reason and when a new request is made before the last permitted extension period expires.
If no opposition is filed, or if an opposition to the mark’s registration 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
Suppose a public member feels they will be harmed by registering a previously published mark but missed the 30-day window for the opposition. In that case, the harmful trademark may still be removed from the primary register through a cancellation process. Because both are argued before the TTAB, a cancellation procedure works similarly to an opposition meeting. It’s worth noting that a trademark owner can seek incontestability of their property after five years. Some reasons for cancellation, such as the potential for misunderstanding, are no longer valid. As a result, if a mark was causing harm and was published outside of the opposition window, it may be necessary to initiate a cancellation process right away. Contact one of our trademark lawyers at Brealant now if you have questions regarding registering your mark or believe you could be injured by registering another’s mark.