What does ‘Published for Opposition’ Mean (or ‘Publication for Opposition’)?

Under 15 U.S.C. §1062(a), a trademark or service mark must be published for opposition before it can be registered on the Principal Register. This Publication and [short] time period (30 days) give a way and a time frame to object to the registration. Not just anyone can object/oppose, only any person or entity who believes that he/she/it would be damaged by the registration of the mark and can prove both Standing  and Grounds.

Trademarks are always published on Tuesdays in the Official Gazette for that week. Every Opposition period starts out at 30 days (4 weeks plus two days) and ends on a Thursday. A 30-day extension to file an opposition starts on the Thursday that the Opposition period ends and continues for another 4 weeks plus two days and ends on a Saturday. If there is a sufficient reason, otherwise known as cause, the extension of time can be made for 90 days and the cause must be stated.

Someone wanting to oppose who misses the opposition period can wait and file a Petition for Cancellation after the mark registers, if it does. Many intent-to-use applications never register because a Statement of Use is never filed. Extensions for Statement of Uses can be filed multiple times (up to two years time) so missing the opposition period can cause a long wait to cancel under some circumstances.

How Often are Trademarks Opposed or Petitions to Cancel Filed?

Oppositions and Cancellations are Uncommonly Instituted But Are Real Threat Once Instituted

*The vast majority of published applications proceed directly to registration without any opposition. An opposition proceeding instituted for only 2.8 percent of 4.0 million published applications with prosecution event-data coverage in a recent USPTO study. For those applications no longer pending, the data indicate that the opposition was sustained [the trademark did not issue]  in about 44.8 percent of observations in which an opposition was instituted.

A cancellation proceeding is instituted for only about 1.1 percent of the 3.4 million registrations with prosecution event-data coverage. For those registrations with proceedings no longer pending, the data indicate that a cancellation was granted in about 44.9 percent of observations in which a cancellation proceeding was instituted.

*As reported by Graham, Stuart J.H. and Hancock, Galen and Marco, Alan C. and Myers, Amanda F., The USPTO Trademark Case Files Dataset: Descriptions, Lessons, and Insights (January 31, 2013).

All, None, or Some

For each and every class in an application to be opposed, the opposer must choose whether it is opposing all, none, or some of the goods and/or services. If the opposer chooses to oppose some, but not all of the items in the class, it may edit (by "deletions only") the identification(s) of goods and services so that only the opposed goods or services remain.

15 U.S.C. § 1062  Publication

 (a) Upon the filing of an application for registration and payment of the prescribed fee, the Director shall refer the application to the examiner in charge of the registration of marks, who shall cause an examination to be made and, if on such examination it shall appear that the applicant is entitled to registration, or would be entitled to registration upon the acceptance of the statement of use required by section 1051(d) of this title, the Director shall cause the mark to be published in the Official Gazette of the Patent and Trademark Office:   Provided, That in the case of an applicant claiming concurrent use, or in the case of an application to be placed in an interference as provided for in section 1066 of this title, the mark, if otherwise registrable, may be published subject to the determination of the rights of the parties to such proceedings.

15 U.S.C. § 1063  Opposition

(a) Any person who believes that he would be damaged by the registration of a mark upon the principal register, including the registration of any mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may, upon payment of the prescribed fee, file an opposition in the Patent and Trademark Office, stating the grounds therefor, within thirty days after the publication under subsection (a) of section 1062 of this title of the mark sought to be registered.  Upon written request prior to the expiration of the thirty-day period, the time for filing opposition shall be extended for an additional thirty days, and further extensions of time for filing opposition may be granted by the Director for good cause when requested prior to the expiration of an extension.  The Director shall notify the applicant of each extension of the time for filing opposition.  An opposition may be amended under such conditions as may be prescribed by the Director. (b) Unless registration is successfully opposed— (1) a mark entitled to registration on the principal register based on an application filed under section 1051(a) of this title or pursuant to section 1126 shall be registered in the Patent and Trademark Office, a certificate of registration shall be issued, and notice of the registration shall be published in the Official Gazette of the Patent and Trademark Office; or (2) a notice of allowance shall be issued to the applicant if the applicant applied for registration under section 1051(b) of this title.

The current fee for a Notice of Opposition, per class is $600.00 and the Notice must contain certain information in order to be accepted by the Trademark Trial and Appeal Board (TTAB). A Suggested Format for an opposition is provided by the USPTO at www.uspto.gov/web/offices/dcom/ttab/oppositionformat.pdf..   

30 Days Seems like a Short Time Period!

The actual time frame to oppose after publication is only 30 days (or more with an extension) but a trademark or trade name owner who is diligent about protecting their rights can search for marks to oppose long before this period starts. A claim of likelihood of confusion is the most frequently encountered issue in Board (TTAB) inter partes proceedings (309.03(c) Grounds).  

The Opposition period is not just a formality to make sure the examiner did not miss a likelihood of confusion issue during examination. The USPTO only looks at the Right to Register a mark with respect to other federally registered or pending federal registrations during the examination of a mark before opposition. The Right to Use is much broader and incorporates common law rights as well as federal registration rights. The Right to Use a mark is not examined by the USPTO and can only be enforced by prior users of a mark who believe that a registration will damage their prior rights and protect those rights through opposition, cancellation or suing through the courts. An opposer may be an owner of a registered trademark, an unregistered trademark, or a trade name.

How/When can a trademark published for opposition be identified and searched for Opposition Purposes

A trademark application appears on TESS at the USPTO web site within a few days of the application being submitted and remains there for a minimum of about 3-4 months (if there are no issues for refusals) before the trademark is approved. A trademark published for opposition is published for 30 days for opposition. The approval step is marked on the USPTO TSDR (Trademark Status and Document Retrieval) as ‘APPROVED FOR PUB - PRINCIPAL REGISTER’ . Note: This step may take much longer than 3-4 months if the trademark application did not meet USPTO requirements for the Right to Register. Note: marks on the Supplemental Register are not published for opposition.

This change in the record means that the USPTO believes the trademark would be entitled to registration under the current circumstances (assuming an acceptable AAU or SOU were filed for an intent-to-use application and that no new issues were found). If the application is an intent-to-use application, the examiner may re-examine an application when the Statement of Use (SOU) is filed because there may be new issues involved with the specimen submitted, new issues of likelihood of confusion with marks that registered during the lag time  or other issues.

When the APPROVED FOR PUB - PRINCIPAL REGISTER step is finished, the trademark application is given a date in the ‘Published for Opposition’ field that is 3-5 weeks after the date of APPROVED FOR PUB - PRINCIPAL REGISTER (This is a future date at this point, the actual publication has not taken place, just the approval.) In other words, 3-5 weeks before a mark publishes for opposition, the records show that it is going to publish and it can be searched and if applicable, an opposition planned for the  future 30 day period.

 ‘Published for Opposition’ Searches Using TESS

(Trademark Electronic Search System)

A Trademark Official Gazette (TMOG) “search line” is available from TESS where users can generate a list of all marks Published for Opposition in that TMOG, or a list of all new registrations published in that TMOG. TESS can be accessed at: http://tess2.uspto.gov/. The following 5 choices are available for general searching but only those marked A, B, and C below can be searched using the Published for Opposition field.

Select The Search Form

* New User Form Search (Basic)

A  * Structured Form Search (Boolean)

B  * Free Form Search (Advanced Search)

* Browse Dictionary (View Indexes)

C  * Search OG Publication Date or Registration Date

Note that users can refine their search so that they include only marks published in a particular TMOG that have particular characteristics, the examples used here is for IC 009 and the Trademark Official Gazette (TMOG) for a particular date in 2021.  

A. Search the Published for Opposition Date field using * Structured Form Search (Boolean)

To generate a list of all the marks published for opposition in the TMOG of  07 September 2021 that identify goods classified in international class 9, enter the following into TESS at http://tess2.uspto.gov/ and select * Structured Form Search  

   1. In the “search term” line, enter 20210907;

   2. In the corresponding field line, select “Published for Opposition Date” from the pull-down menu;

   3. In the operator field, select “and” from the pull-down menu;

   4. In the “search term” line, enter 009; and

   5. In the corresponding field, select “international class” from the pull-down menu.

   6.  Submit Query

[This TESS search brought up 983 Records]

B. Search the Published for Opposition Date field using * Free Form Search (Advanced Search)

To generate a list of all the marks published for opposition in the TMOG of  07 September 2021  (always a Tuesday) that identify goods classified in international class 9, enter the following into TESS at http://tess2.uspto.gov/ and select * Free Form Search   

   1.  Search box enter the following: 20210907[PO] AND 009[IC]

   2.  Submit Query

[This search brought up 983 records.]

More complex options are available:

International Class [IC]

This field identifies the class(es) assigned to a mark under the International Classification of Goods and Services (Nice Agreement) based upon the goods or services on which the mark is used. The International Classification has been the primary classification for marks in the United States since September 1, 1973.

TIP: Enter a numeric international class in quotes with leading zeros, if necessary.

Example: Enter "032"[IC]  or 032[IC] to retrieve documents classified in International Class 032.

Note: This International Class field is included for searching convenience, but the displayed International Class information is actually part of the Goods and Services [GS] text to allow for the searching of specific GS text terms occurring in a specific International Class. For example, the search ((IC WITH "032") SAME FRUIT)[GS] will retrieve only marks containing the word FRUIT occurring for International Class 032 in the Goods and Services statement.

Published for Opposition [PO]

This field contains the date that the application was published for opposition in the Trademark Official Gazette. Dates are stored in the format YYYYMMDD for the four-digit year YYYY, the two digit month MM and the two digit day DD. The $ (unlimited) and ? (single character) truncation operators are appropriate for use in date searches.

For example, the following search will retrieve all marks with a published for opposition date of 07 September 2021:      20210907[PO]

Either of the following searches will retrieve all marks with a published for opposition date any time in September 2021:      202109$[PO]      202109??[PO]        

[33023 records]

Alternatively, the ` operator can be used for numeric range searches on date fields. The following search will retrieve all marks with a published for opposition date in January 2021 or later:      `PO > "20210000"

The following search will retrieve all marks with a published for opposition date from January 2021 through December 2021.      `PO > 20210000 < 20220000

Note that  some searches on TESS will also pick up trademark applications that are scheduled for publishing for opposition that haven’t happened yet.

C. Search using Search OG Publication Date or Registration Date

To generate a list of all the marks published for opposition in the TMOG of  07 September 2021 that identify goods classified in international class 9, enter the following into TESS at http://tess2.uspto.gov/ and select * Search OG Publication Date or Registration Date   

   1. In the “OG Date” line, enter 20210907;

   2. In the corresponding field line, select “publish for opposition date” from the pull-down menu;

   3. In the operator field, select “and” from the pull-down menu;

   4. In the “search term” line, enter 009; and

   5. In the corresponding field, select “international class” from the pull-down menu.

   6. Submit Query

Please note that although the TMOG search line is specifically designed for searching particular issues of the TMOG, other search lines in TESS can be used to conduct more complex searches of individual TMOGs.

Please also note that whereas the TMOG is published each Tuesday, the TESS records for particular marks generally do not include the TMOG publication date for the mark until the following Wednesday. Hence, a search of a particular TMOG issue that is conducted on the day that issue is published may not yield any results.

Please note also that the ‘published for opposition date’ can also contain future dates! As soon as an opposition date is set, this field is populated EVEN IF IT HASN’T OCCURRED YET.

FORM FILLING AND FORM FILING: Filling out the trademark application form is just one small step of a process for achieving A Strong Trademark through registration. Not Just Patents® Legal Services does NOT take the position that following quick easy instructions or SAME DAY SERVICE will actually result in a strong trademark registration. Many, many trademark applications (about half) result in no federal trademark registration rights because the application did not support a registration. A federal registration on the Principal Register is not just a certificate that is obtained by filling out a form and paying fees, it is a property right (once granted) establishing not only legal rights but also legal liabilities.

Read the disclaimer that the typical form filling service has on their web page-they say that using their service is not a substitute for obtaining good legal advice. Getting good legal advice is recommended by the USPTO when filing a trademark application.

Trademark Checklist

1. Check Inherent Strength  Does your trademark consist of inherently distinctive element(s) that can be claimed for exclusive use?

Marks that are merely descriptive (or worse, generic) are hard to register and hard to protect. Section 2(e) refusals are very common refusals. Whether a trademark is merely descriptive depends on the goods and services description.

2. Check Right to Use  

Does the trademark have a likelihood of confusion with prior-used trademarks (registered or unregistered)?

Likelihood of confusion refusals are very common refusals and lead to many trademark applications going abandoned.

3. Check Right to Register  Does the trademark meet the USPTO rules of registration? (Does not have any grounds for refusal?)

4. Check Specimen  Is the trademark used as a trademark or service mark in the specimen?

Specimen refusals are very common refusals. The right type of specimen for any particular application depends on what the goods or services are.

5. Check Goods and Services ID   Is the goods/services identification right for the facts?  Definite and accurate? Is the services ID as broad as it should be under the circumstances or will a narrower description distinguish it better?

ID refusals are common too but getting the right description identifies the scope of protection. Too narrow of a description can yield narrow rights. Too broad of a description can result in an unnecessary likelihood of confusion with someone else.

6. Check which application form is the best for your trademark application. TEAS Plus? TEAS Standard?

Need help? Call 1-651-500-7590 or email  W@TMK.law.

Go Beyond Just Trademarkable To A Strong Mark: Aim Higher

Do you know the answers to these questions?

• Can I claim exclusive rights to use this trademark?
• Does this trademark meet the qualifications for being registered on the USPTO Principal Register? Is it trademarkable?
• Is this trademark strong enough that others would want to license it from me?
• Does this trademark have potential to extend to other product lines?
• Is this mark inherently distinctive?
• Are there others users of this mark that could prevent me from using this mark or would sue me or prevent me from getting federal registration because they can prove they are prior users?
• Are there valid reasons for someone to oppose or cancel the mark because the mark doesn’t qualify for protection or because they have superior rights?
• Would the USPTO find a likelihood of confusion with someone else’s registered or pending trademark and prevent my registration of this mark?
• Would a court enforce the use of this trademark?
• Do I have to somehow acquire distinctiveness for this mark before it would be recognized as being trademarkable?
• Does this mark use such common terms that it would be called a weak trademark?
• Is this mark descriptive or deceptive or geographically descriptive?
• Do I use the mark in a way that increases my rights or am I using it in a way where it does not function as a trademark?

Don’t assume that protecting your reputation and legal rights is too expensive, abandoning your trademark registration because of problems from office actions and refusals may result in a larger losses-loss of assumption of authenticity, loss of the right to protect from counterfeits, and loss of reputation. In today’s economy (and for the future), Intellectual Property Protection may be one of the best ways to invest in your business. Call us with questions at 1-651-500-7590.  

Can I use  USPTO TESS to search copyrights? No, the TESS trademark search system is for USPTO pending (LIVE) trademark applications and registrations and dead trademark applications and registrations only. The copyright public catalog search system can be found through copyright.gov or at the link https://cocatalog.loc.gov/cgi-bin/Pwebrecon.cgi?DB=local&PAGE=First. Note that works registered prior to 1978 may be found only in the Copyright Public Records Reading Room  (lm-404) on the fourth floor of the James Madison Memorial Building of the Library of Congress.

Not Just Patents ® and Aim Higher® are federally registered trademarks of Not Just Patents LLC for Legal Services.