The publication phase is the second step in the Federal trademark registration process.
When applying to register a trademark with the US Patent and Trademark Office (USPTO), your application will first be reviewed by a USPTO Examiner.
This Examiner will allow or refuse your trademark application to proceed to the publication phase depending on a variety of criteria. (Most of these considerations have been discussed in other articles on our Trademark Registration Blog.)
Once a trademark application is approved by the USPTO Examiner assigned to the case, the application moves to the publication phase.
What is it?
The Trademark Publication Phase: Purpose and Process
When a trademark application is fully examined and approved for registration by the USPTO Examiner, it is then published in what is called the Official Gazette.
While published in the Gazette, the application may be reviewed by third-party trademark owners.
Indeed, the purpose of the publication phase is to allow third-party trademark owners to review a pending application and to determine whether or not their interests would be damaged by the successful registration of the pending application.
This “damage” would be, for instance, the dilution of the economic value of the registered trademark by “blurring” or “tarnishment.”
That is, if consumers viewing the pending trademark would be confused as to whom they were buying a good or service from, this would be problematic for the registered mark’s owner.
Likewise, if a proposed registration “tarnished” or besmirched a registered mark (think slander or mockery), this would also pose a problem for a third-party trademark owner.
A third-party trademark owner harboring a concern has 30 days from the date to file a Notice of Opposition to the registration of the pending application.
What Is a Notice of Opposition?
The Notice of Opposition is a pleading within the trademark registration legal context that halts the progress of a pending trademark registration application.
The Opposition must include a short and plain statement demonstrating why the pending application would be damaging and what the grounds for opposition are.
Those grounds must be legally relevant, and the filing party must have an actual stake in the proceeding.
For instance, a member of the general public cannot Oppose a trademark registration simply because they don’t like the look of the logo.
Generally, a party filing a Notice of Opposition in the publication phase of the process must have legitimate grounds for asserting that the proposed mark—
What Happens after a Notice of Opposition Is Filed?
Once filed, the owner of the pending trademark registration application will have 40 days to respond to the Opposition.
If no response is filed, the application is Abandoned by the USPTO.
If an answer is timely filed, the parties will enter a process before the Trademark Trial and Appeal Board (TTAB) that very closely resembles any other Federal litigation.
There will be a process of Discovery, in which the parties will request and receive relevant information and documentation from one another.
The parties’ evidence will be submitted in turn, after which oral argument may or may not be requested or granted. The parties submit briefs, making their arguments and citing relevant precedent and authority, and then—
A decision is issued by the TTAB.
TTAB decisions are appealable to the U.S. Courts of Appeal.
The Trademark Publication Phase: The Bottom Line
The bottom line is that trademark registration is not the simple form-filling exercise it may appear to be at first glance.
The trademark registration that you “buy” from a non-attorney online service for a small fee may develop quickly into expensive litigation that requires the assistance of a licensed U.S. trademark lawyer in any case.
It’s better to have knowledgeable legal assistance on your side from the start.
A proper pre-application clearance search, in particular, conducted by an experienced trademark attorney, can help you to spot problems that may develop into Opposition later before you invest valuable resources into the application process.
If you need to register your trademark, file a Notice of Opposition, or Respond to a Notice of Opposition, contact us to discuss your matter by clicking the button below.
We are a Detroit-based intellectual property law firm but offer virtual consultations and represent clients nationwide for Federal trademark matters.