Examination of my application is finished. What happens next?
After examination of an application is completed and the examining attorney determines that the mark is entitled to registration on the Principle Register, the mark is published in the Official Gazette of the USPTO for opposition. Once published, third parties can oppose registration of the mark within a limited window after the date of publication, or within an extension of time granted by the Board for filing an opposition. Marks that are found to be registrable on the Supplemental Register are registered when printed in the Official Gazette. Marks registered on the Supplemental Register cannot be opposed, but are still subject to cancellation.
How can a third party oppose registration of my mark?
Any person who believes that he or she would be damaged by the registration of a mark on the Principal Register may oppose registration by filing a notice of opposition. The notice of opposition is required to include a concise statement of the reasons for the opposer’s belief that the opposer would be damaged by the registration of the opposed mark, and must state the grounds for opposition. Two or more persons may join in an opposition, and related companies are considered separate persons for the purpose of filing an opposition.
How long do third parties have to oppose my registration?
An opposition must be filed within thirty days after the date of publication in the Official Gazette, or within an extension period granted by the Board. This time within which to file an opposition is set by statute and may not be extended or waived.
What happens if a third party opposes registration of my mark?
Typically, an opposition proceeding is initiated before the Trademark Trial and Appeal Board (“TTAB” or “Board”). An interference is a proceeding in which the Board determines which, if any, of the owners of conflicting applications (or of one or more applications and one or more registrations that are in conflict) is entitled to registration. See 15 U.S.C. §§1066, 1068.
An interference can be declared only upon petition to the Director. However, the Director will grant such a petition only if the petitioner can show extraordinary circumstances that would result in a party being unduly prejudiced in the absence of an interference. 37 C.F.R. §2.91(a). The availability of an opposition or cancellation proceeding ordinarily precludes the possibility of undue prejudice to a party. Thus, a petitioner must show that there is some extraordinary circumstance that would make the remedy of opposition or cancellation inadequate or prejudicial to the party’s rights. Interferences are generally limited to situations where a party would otherwise be required to engage in successive or a series of opposition or cancellation proceedings, and where the issues are substantially the same. See In re Family Inns of Am., Inc., 180 USPQ 332 (Comm’r Pats. 1974).
The following matters are not subject to interference: (1) registrations on the Supplemental Register; (2) applications for registration on the Supplemental Register; (3) registrations under the Act of 1920; and (4) registrations of marks that have become incontestable.
How is an opposition proceeding different than examination of the trademark application?
Proceedings before the Trademark Trial and Appeal Board (“TTAB” or “Board”) are generally more formal than trademark examination. For example, Board proceedings often require formal pleadings, discovery, motion proctice, briefs, and binding judgements.
Board proceedings are governed by the Lanham Trademark Act of 1946, the rules of practice in trademark cases (commonly known as the Trademark Rules of Practice), the rules pertaining to assignments in trademark cases, and the rules relating to the conduct of practitioners and the representation of others before the United States Patent and Trademark Office (“USPTO” or “Office”). The USPTO rules governing procedure in inter partes proceedings before the Board are adapted, in large part, from the Federal Rules of Civil Procedure, with modifications due primarily to the administrative nature of Board proceedings.
Proceedings before the Board are also governed, to a large extent, by precedential decisions in prior cases. These decisions include those of the Board itself, as well as the decisions of the Court of Appeals for the Federal Circuit (“Federal Circuit”) (which determines appeals from decisions of the Board); the Court of Customs and Patent Appeals (predecessor of the Court of Appeals for the Federal Circuit); and the Director of The United States Patent and Trademark Office (formerly the Commissioner of Patents and Trademarks) (“Director”), who determines petitions seeking review of Board actions on procedural matters. The Board relies primarily on precedent from the Court Appeals for the Federal Circuit, not only because the Federal Circuit is the Board’s primary reviewing court, but also because its cases address registration issues more specifically.
Does the Trademark Trial and Appeal Board handle other types of proceedings?
The Board has jurisdiction over four types of inter partes proceedings, namely, oppositions, cancellations, interferences, and concurrent use proceedings.
An opposition, as discussed above, is a proceeding in which the plaintiff seeks to prevent the issuance of a registration, in whole or in part, of a mark on the Principal Register. “Any person who believes that he would be damaged by the registration of a mark” may file an opposition thereto, but the opposition may be filed only as a timely response to the publication of the mark, in the Official Gazette of the United States Patent and Trademark Office.
A cancellation proceeding is a proceeding in which the plaintiff seeks to cancel an existing registration, in whole or in part, of a trademark on the Principal Register or the Supplemental Register. A petition for cancellation may only be filed after the issuance of the registration. A petition for cancellation may be filed by “any person who believes that he is or will be damaged by the registration” of the mark.
An interference is a proceeding in which the Board determines which, if any, of the owners of conflicting applications (or of one or more applications and one or more registrations which are in conflict), is entitled to registration. The proceeding is declared by the Office only upon petition to the Director showing extraordinary circumstances therefor, that is, that the party who filed the petition would be unduly prejudiced without an interference. Ordinarily, the availability of an opposition or cancellation proceeding is deemed to prevent any undue prejudice from the unavailability of an interference proceeding. An interference that has been declared by the Director is not instituted by the Board until after all of the marks that are to be involved in the proceeding have been published in the Official Gazette for opposition.
A concurrent use proceeding is a proceeding in which the Board determines whether one or more applicants is entitled to a concurrent registration on the Principal Register, that is, a registration with conditions and limitations, fixed by the Board, as to the mode or place of use of the applicant’s mark or the goods and/or services on or in connection with which the mark is used (usually, a concurrent registration is restricted as to the territory which it covers). The proceeding may be initiated only through the filing of an application for registration as a lawful concurrent user, and is instituted by the Board only after each of the one or more involved applications has been published for opposition in the Official Gazette, and all oppositions thereto (if any) have been withdrawn or dismissed.
The Board also has jurisdiction over ex parte appeals, that is, appeals from an examining attorney’s final refusal to register a mark in an application.
I have a federal trademark registration. Does that mean my mark is safe from proceedings before the Trademark Trial and Appeal Board?
In some circumstances, even federally registered marks may be challenged through a cancellation proceeding. Any person who believes that he, she or it is or will be damaged by a registration may file a petition to the Trademark Trial and Appeal Board for cancellation of the registration in whole or in part. Cancellation proceedings are similar to other proceedings before the Board, following many of the same formalities. If the third party is successful and the TTAB issues an order granting the cancellation of the registered extension of protection, the USPTO will cancel the registration in due course. Invalidation may also occur pursuant to an order of a federal court of the United States cancelling the registered extension of protection. Such order may result from, for example, infringement proceedings involving the holder and a third party, or the disposal of the holder’s assets. The USPTO will cancel the registration pursuant to the court order.
Should I hire an attorney?
Trademark registration and maintenance is complex. Although not required, most owners use private trademark attorneys for legal advice regarding use of their trademark, registration of a mark, and the unique issues for maintaining a federal registration, since not all registration remain valid perpetually. A private trademark attorney (not associated with the USPTO) may help you avoid many potential pitfalls.
For more information relating to representation for preparation, filing, examining, and maintaining your federal trademark registration, contact a trademark law firm such as Nyman IP at email@example.com or 312.487.2532.
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