Every two weeks, the United States Patent & Trademark Office publishes all of the approved trademark applications to the Original Gazette for opposition. Whether you’re an attentive trademark owner who checks the Gazette frequently, or you subscribe to a trademark monitoring service you may see a trademark that you, as a trademark owner (or, as we will discuss later, a member of a group being disparaged by an application) object to. This article discusses the trademark opposition process before the Trademark Trial & Appeal Board.
I see that a trademark confusingly similar to mine has been “Published for Opposition?” What does that mean?
After a mark is reviewed by an examining attorney at the USPTO, the mark will be published for opposition, which means that the trademark opposition period starts. The trademark opposition period is a period of thirty days when anyone with a real interest in the proceeding can oppose the trademark application and attempt to stop the trademark from being registered. While this does not mean that the applicant is entitled to any benefits of a federal registration, it means that the examiner found no issues with the application and has approved it. If no one opposes the mark, it will issue.
Who can oppose a trademark?
Anyone with a “real” or “legitimate” interest in the proceeding may oppose a trademark. Generally, this means that the opposer must have a direct and personal stake in the outcome, and the belief must be reasonable and reflect a real interest in the issue. Therefore, a party cannot bring an opposition because it thinks the registration would generally be unfair. It must show that it will have a personal effect on the opposer. If the opposer is claiming that it owns the registration for a confusingly similar mark, the ownership of a trademark registration is generally sufficient, as long as the owner can show that in some way his or her trademark might be damaged.
How did the USPTO let this happen?
Trademark examiners at the USPTO are human beings and can sometimes miss registrations that are confusingly similar to the applied-for mark. This is precisely what the trademark opposition period is for, but trademark owners must be diligent in order to prevent a confusingly similar mark from gaining a federal trademark opposition.