Before a trademark application is registered, it goes through a rigorous examination process by a government attorney. Once the government attorney approves the trademark application, it is “published for opposition.” While it sounds scary, the “publication period” or “opposition period” is a part of every trademark application process.
A mark that has been “Approved for Publication” means that the examining attorney found no issues that would bar the registration of that trademark and has completed their examination. Once approved, the USPTO schedules the trademark for “publication.” Once published, third parties who believe they will be damaged by the registration of a published trademark have thirty days to file a “Notice of Opposition” (or file for an extension of time to oppose). While it’s impossible to predict whether someone will file an opposition, these proceedings are rare. In 2020, of the 328,001 trademark applications approved for publication, only 2% of them were opposed (6,712 oppositions).
If no oppositions are filed, the trademark will then proceed to the final stages of the registration process in 3-4 months.
The length of the final stage is dependent on how the mark was filed. If an applicant already submitted its “use in commerce” to the USPTO, or based the application off of a foreign registration, the application will proceed directly to registration.
If an application was filed with an “intent to use” the mark in commerce (a Section 1(b) application) the applicant will need to file proof of use before the USPTO will register the trademark. The USPTO will issue a Notice of Allowance which will then require the applicant to further submit a Statement of Use within six months. The applicant can extend this deadline upon request to allow the applicant time to use the mark in commerce for all goods and services listed (or deleting the ones that aren’t). This “proof of use” filing must be submitted before the USPTO will issue the registration number or certificate.
Here are some frequently asked questions about the “publication period.”
Why is it called the “publication period?”
When the trademark system was first formed, there were no electronic databases. Trademarks that were approved by the examining attorneys were then published in a print publication, called the Official Gazette (“OG”). The OG lives on as an online database hosted by the USPTO that is updated weekly.
Nowadays, trademark applications themselves are public records, available in an online database, visible to the public, within five days of submission. The marks are still published in the OG, but “publication” refers to the start of the thirty-day opposition period.
How long after a mark is “Approved for Publication” does the opposition period start?
The opposition period starts on the date the application is published. The USPTO typically publishes a trademark application 30 to 60 days after the date it is “Approved for Publication.”
How long can the opposition period be extended?
The opposition period can be extended for 30 days for free, and for an additional 60 days for a fee. If the parties both consent, a final 60-day extension is available for an additional fee.
Will the USPTO send notices to other brand owners?
The USPTO does not automatically issue notices or alerts to any trademark owners. It is the responsibility of each trademark owner to monitor the USPTO database for marks that could infringe upon their rights. Law firms and other legal services providers typically offer paid monitoring services on behalf of their clients.
Can the USPTO withdraw the approval during publication?
It is extremely rare, but the USPTO does have the authority to withdraw any approval before the trademark is registered, including during the publication period. Withdraw of approval occurs in less than .1% of applications.
Can someone oppose after the opposition period?
Once the opposition period is over, any oppositions filed will be considered untimely. Parties can, however, file a Petition to Cancel the resulting registration within 5 years (in most cases), but it becomes harder to do so.
When my trademark application is approved for publication, does that mean I can start using the ®?
No, “approved for publication” does not mean a mark has registered. Continue using ™ until your attorney alerts you that the mark has been registered and sends the registration number and certificate.
Registering a trademark with the USPTO can be a long process and if an application is “approved for publication” then it has a very good chance of proceeding to registration. However, it’s not quite there yet, and it is important for the trademark applicant to know where they are in the process, to avoid any mistakes that could hurt their trademarks.