Receiving a Notice of Publication is perhaps one of the most exciting and gratifying parts of the trademark process short of getting an actual Registration Certificate. Now that you have successfully made through the examination process at the United States Patent and Trademark Office (“USPTO”) your mark will finally be published in the USPTO Official Gazette.  Automatic win?  Not always.  There is a final potential hurdle that, while relatively rare in the past, has become more and more common in recent years as trademarks proliferate and the software to monitor applications is more flexible.  Once your mark is published in the Gazette, any party that believes it will be affected by your trademark registration has the right within thirty (30) days of the publication to either: (1) file an opposition to your proposed trademark or (2) request an extension from the USPTO to respond.  So, what does that mean?

A trademark can be opposed for numerous reasons, including an allegation that there is a likelihood of confusion with another registered mark, that the mark is scandalous/offensive, that the mark is merely descriptive, or there is a possibility that the opposing party’s registered trademark will suffer dilution or other harm from a perceived connection to your proposed mark.

If you receive a notice of opposition, you are now involved in a limited form of court proceeding, akin to a lawsuit, but without monetary damages or attorneys fees on the table (in most cases).  A trademark opposition is heard and judged by the Trademark Trial and Appeal Board (“TTAB”).  Similar to a court case, you will have to answer every allegation made in the opposition, and you will have to file an Answer within thirty (30) days of the filing of the other person’s notice of opposition.  The TTAB has a lengthy Manual of Procedure, which includes the right for each party to conduct discovery that is “relevant to its claims and defenses.”  Discovery in TTAB cases usually involves written interrogatories (questions) and requests for production of documents (just what it says, the exchange of documents) to support your trademark application.  Likewise, the opposing party must present answers to your questions and requests for documents to support their claim that you should not be able to register your trademark. While there is very often an expert witness involved, particularly in the likelihood of confusion cases, it is rare for either party to take in-person depositions, or to have to ever appear in-person in the case.

The TTAB will then set a period for each side to provide testimony.  If a hearing is requested, that must be filed separately from that party’s testimony/evidence.  After the testimony is submitted and the hearing, if any, is held (usually by telephone), the TTAB will consider the evidence and render a decision.  Patience is necessary here – this process can take another few months until a decision is reached.  Of course, you can also reach a settlement with the other party on terms that you decide amongst yourselves.  A trusted trademark attorney from Dunlap Bennett & Ludwig can help provide advice and guidance throughout this process.

If the TTAB does not rule in your favor, you may either accept the TTAB’s decision or file an appeal with the Federal Circuit (a special circuit court with jurisdiction to hear TTAB appeals) or a federal district court that has jurisdiction.  If you appeal, this process will again take some time as the case is heard and decided. However, if the TTAB rules in your favor, congratulations are again in order as your trademark continues through the registration process.  The USPTO cautions that it may take approximately four (4) months to receive the “official status” of your application after the TTAB renders its decision.

Finally, assuming you prevail, after this process is completed, you will either receive a Registration Certificate (if your trademark is already used in commerce) or a Notice of Allowance (if you filed an Intent to Use application).  You are then free to use your trademark as registered ®. If you have questions about the trademark process, it’s best to leverage the expertise of an experienced intellectual property attorney.

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Posted in: Intellectual Property - Trademarks

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