When searching for the status of a trademark application on the United States Patent and Trademark Office website, one may come across the term "published for opposition." That term can cause concern, especially for those with pending trademark applications. All applicants should understand what "published for opposition" means, as it is a crucial step in the trademark application process. At the Grabbe Law Office, our experienced intellectual property legal team can assist applicants throughout the entire trademark journey, including the publication phase. If you want to discuss the next steps after trademark publication, consider speaking to a local trademark attorney at 785-621-4711 or setting up a free 15-minute consultation.

 

What Are the Next Steps After Trademark Publication?

 Under the guidelines established by the United States Patent and Trademark Office, once a trademark has been accepted for publication, it will appear in the weekly online Trademark Official Gazette. Despite its inclusion in the publication, the trademark remains unregistered. Subsequently, within thirty days of publication, any individual who feels that the trademark registration would cause them undue harm may file an opposition by submitting a Notice of Opposition. The notice initiates a legal proceeding before the Trademark Trial and Appeal Board, which is tasked with adjudicating such disputes. Only about two percent of the published trademarks are opposed. 

 

Time Frame Without Objection After Trademark Publication 

 If no objections are raised to the trademark during the publication period, the trademark application process will proceed to the next phase. It is crucial to note that the trademark has not yet been registered at this time. The timeframe from the publication of the trademark to the receipt of official notification regarding its progress or registration may range from two months or more.

 

Registration Speed Depends on Whether the Mark is Already Used in Commerce

 The next steps of the trademark publication process depend on whether the trademark application is used in commerce. If the mark is used in commerce, the trademark will be registered upon fulfillment of the necessary criteria. If the purpose of the application is the intent to use the trademark in the future, the trademark will not yet be registered. The United States Patent and Trademark Office will instead issue a Notice of Allowance, which mandates the completion of a Statement of Use (SOU) before a specified deadline. The SOU must include a sample that demonstrates the use of the trademark in a business setting. Upon the submission of an appropriate SOU, the trademark will be registered.

 

Is it Permissible to Use The ® Symbol After a Trademark Application has been "Approved for Publication"? 

 No, being "Approved for Publication" does not indicate that a trademark is officially registered. Until your attorney confirms the registration and provides you with the registration number and certificate, it is recommended that you continue using the TM symbol.

 The process of obtaining a registered trademark through the USPTO can be lengthy, however, once an application has been deemed "Approved for Publication," it is likely to progress to registration. It is crucial for the trademark applicant to be aware of their status in the process, as making improper use of symbols or representations may negatively impact their trademark.

 

Does the USPTO Notify Other Trademark Holders? 

 The USPTO does not routinely send notifications or alerts to trademark owners. Instead, each trademark owner is responsible to regularly monitor the USPTO database for any trademarks that may encroach upon their rights. The experienced intellectual property attorneys at the Grabbe Law Office offer paid monitoring services to their clients.

 

Is It Possible for the USPTO To Revoke Approval During the Publication Stage?

 While it is highly uncommon, the USPTO retains the authority to revoke any clearance, including during the publication period, before the official registration of a trademark. It is worth noting that such rescission of approval occurs in fewer than 0.1% of all trademark applications.

 

What Happens if an Objection is Raised After the Opposition Period has Lapsed? 

 If an opposition is submitted after the opposition period has expired, it will be deemed to be untimely. However, it is possible for the parties involved to file a Petition to Cancel the subsequent registration within 5 years, in most cases, although the process becomes more challenging to pursue.

 

What Does the Publication Period Mean? 

The term "publication period" originates from the early days of trademark administration. When the trademark system was first established, there were no digital databases, and trademarks that had been accepted by government attorneys were published in a printed periodical known as the Official Gazette (OG). Today, the OG continues to exist in the form of an online database maintained and updated regularly by the USPTO.

 Trademark applications are public records that can be accessed by the public through an internet database within five days of being received by the USPTO. While trademarks remain published in the OG, the term "publication" now refers to the initiation of the thirty-day opposition period, rather than the publishing of the trademarks themselves. Grabbe Law Office routinely assists trademark holders in the publication period. 

 

What is the Extent to Which the Opposition Period May Be Prolonged? 

 The opposition period may be extended for 30 days at no cost. However, an additional 60-day extension can be granted for a fee. If both parties agree, a final 60-day extension can be obtained for an additional charge as a next step after trademark publication.

 

When a Trademark is Deemed "Approved for Publication," When Does the Opposition Period Commence? 

 The opposition period begins on the date of publication of the trademark application. Typically, the United States Patent and Trademark Office (USPTO) will publish the trademark application within 30 to 60 days after its approval for publication.

 

An Experienced Intellectual Property Attorney Can Help with Your Next Steps After Trademark Publication

 Trademarks that are published for opposition are in a crucial stage of the trademark application process in the United States. The Trademark Trial and Appeal Board's analysis of an objection filed within 30 days can stir concern. Even when there are no objections during the publication period, the trademark application process continues, but the trademark is not yet registered. The speed of registration depends on the trademark's use in commerce. At the Grabbe Law Office, we can assist with the entire process, including the publication phase, and can be reached at 785-621-4711 for discussions on the next steps after trademark publication. Schedule your 15-minute free consultation today.