One step in the process in registering a
trademark on the Principal Trademark register of the USPTO is passing through
the phase termed �publication for opposition�. Recall the first step in the
registration process is filing of the trademark application. The application is
either based upon actual use in commerce, or a good faith �intent to use�. The
application is examined by a trademark examiner. The examination steps include
searching the data base for similar marks. It also includes examining the proposed
description of goods or services associated with the mark.
Assuming the examiner is eventually satisfied
with the application, the examiner gives approval for publication of the mark
for opposition. The mark is published in the Official Gazette of the Patent and
Trademark office. (Most owners of major or valuable trademarks subscribe to the
Gazette or have services that monitor the Gazette for publication of potentially
The publication of the mark starts a thirty
(30) day period during which a third party can file an opposition to
registration of the mark. This is the first opportunity for third parties to
oppose or object to the prospective mark. Note that pending applications are
published or accessible to the public via the USPTO website. Therefore a third
party can be aware of the processing of the application and waiting for the
start of the opposition period.
The 30 days in which to file an opposition can
be extended upon written request filed with the Trademark Trial and Appeals
Board (TTAB). At this stage, the examiner is no longer involved with the
An opposition is typically a claim filed by the
owner of another registered trademark alleging that the issuance of the new mark
is likely to cause confusion in the mind of the consuming public.
The owner of the pending application is given a
copy of the claim, termed a �notice of opposition�. The applicant is given
thirty days to file an answer, If no answer is filed, the application is
dismissed. Therefore receipt of an opposition notice must be taken
The opposition procedure is similar to civil
litigation. There is first a discovery period. The time period for discovery
is set by the TTAB. The deadlines may be extended on written request. The
discovery comprises depositions, interrogatories, production of records, and
request for admissions. These are the typical tools used in civil litigation.
The TTAB has specific rules governing the
conduct of an opposition, including the discovery phase. Similar to civil
litigation, motions can be filed addressing alleged failure of one party or the
other to comply with the TTAB rules of procedure.
What is unlike civil litigation, is the use of
testimonial depositions, which are separate from discovery depositions. The
TTAB does not conduct open or oral hearings. All matters are resolved by
Most often, the parties, i.e., the trademark
applicant and the opposer, come to some business agreement regarding use of the
trademark. In such event the opposition is resolved by a separate settlement
agreement and the opposition is dismissed. Depending upon the terms of the
settlement, the trademark application may, or may not, proceed to issuance.
Although the trademark application process can
be straight forward and it may be possible for the applicant to register a
trademark pro se, it is advisable to obtain professional assistance when
faced with a notice of opposition.