When an individual or business applies to register a trademark, the application goes through an extensive process. This process begins with an examination by a trademark attorney, and if no problems are found, progresses to trademark publication approval and publication. What does that mean, though? What are the next steps after the trademark is approved for publication? What if another trademark owner opposes your trademark? At Sullivan & Carter, LLP, our knowledgeable trademark attorneys are familiar with the trademark registration process. We can explain each step of the process, including what happens if any particular action is taken, and what the next steps are. Call (929) 724-7529 to schedule a consultation and learn more about what happens next when your trademark is approved for publication.
Trademark publication approval, or being approved for publication, simply means that the United States Patent and Trademark Office’s (USPTO) examining attorney has completed their examination of the trademark application and the trademark itself and has found no issues that would prevent the trademark’s registration. With more than 2.5 million registered trademarks total, and the USPTO indicating 767,138 applications received and 453,454 of those applications becoming registered trademarks in 2024 alone, it is always possible that something has been overlooked. Therefore, once the examining attorney has completed their examination, they mark the trademark as approved for publication.
Once approved, the pending trademark is scheduled for publication in the “Official Gazette” (“OG”), which was initially a printed publication and is now an online database. The “OG” is updated weekly with new marks that have been approved. Trademark publication starts the publication period, or opposition period, which is 30 days with options for extensions.
The trademark publication period, or trademark opposition period, refers to the start of the official 30-day opposition period for pending trademark registrations. Trademark applications are public record and available online within five days of the application’s submission. This means that someone could potentially object to a trademark registration at any time. However, most businesses and individuals do not have the time or ability to scour these applications. The publication or opposition period reduces the number of trademarks they must look at, as any marks that are already found to be infringing on an existing mark have been eliminated.
This 30-day opposition period is the official period of time during which businesses and individuals can file their opposition to registering a mark they believe will infringe on their own trademark rights. The USPTO does not notify other trademark owners of the publication of approved trademarks in the “OG.” Instead, trademark owners are expected to monitor the “OG” and take the appropriate actions on their own. Trademark owners can do this by monitoring the “OG” themselves or by having their trademark attorney or a trademark watch service monitor it for them.
The opposition period begins on the same date as trademark publication. This is not the same date that the trademark is approved for publication. The trademark will be approved for publication and trademark publication is typically 30 to 60 days after that approval. On the date that the trademark is first published in the “OG,” the opposition period begins, and other trademark owners can file their opposition within 30 days. This period can be extended if needed.
There are three opposition period extension options. The first is a 30-day extension that is free of charge. The second is a 60-day extension for a fee. Both of these can be requested by the trademark owner opposing the trademark. The third option is a final 60-day extension for an additional fee, but both parties must agree to this extension.
In most cases, the trademark applicant does not request extensions of the opposition period. The trademark opponent is usually the one who requests an extension. They may do so for a variety of reasons, including to give themselves more time to investigate the potential conflict, negotiate a settlement with the applicant, or simply needing more time to decide whether to file the opposition. They may want to consult with their attorney first or do more research before deciding to file, and the extension provides time to take those actions.
The publication period, or opposition period, is 30 days from the date of trademark publication in the “OG.” The USPTO also offers options to extend that period. Therefore, oppositions filed after the opposition period without requesting an extension are considered untimely and not reviewed. The only options someone has if they wish to oppose a trademark is to file that opposition within the opposition period or file for an extension of the opposition period and then file the opposition before the extension expires.
If someone has done neither of those but still believes that a trademark infringes upon their own trademark rights, the other alternative they may have is to file a Petition to Cancel the resulting registration with the USPTO within five years of the trademark being registered. This is much more difficult to do, as it can only be done for specific reasons under 15 U.S.C. § 1064. If you have received a notice that someone is opposing your trademark publication, or petitioning to cancel your registered trademark, an experienced trademark attorney with Sullivan & Carter, LLP may be able to assist your Chicago-based business in defending your mark.
If someone files an opposition upon trademark publication in the “OG,” the registration process is halted. The individual whose trademark is being opposed will be required to defend their mark before the Trademark Trial and Appeals Board (TTAB). The opposing party will need to make legal arguments and prove how the approved trademark infringes upon theirs, such as getting it rejected due to the likelihood of confusion. If they are successful, the approved mark will be denied registration. If the opposing party is not successful, the trademark application proceeds to trademark registration according to the normal procedure.
Oppositions can occur at any time during this 30-day opposition period. Applicants will want to check their application status to watch for the trademark publication approval by logging in to the Trademark Status and Document Retrieval (TSDR) system, and once they receive the trademark publication approval, they will want to monitor the “OG” for any oppositions that may be filed during the opposition period. Applicants will want to monitor their application status regularly to ensure they do not miss any important notices about their application.
If, during the trademark publication period, there are no oppositions filed, the trademark application will proceed to the final stages of the registration process after approximately three to four months. What happens in these final stages is dependent upon whether the application’s filing basis was “use in commerce” or “intent to use.”
If the trademark application was filed with the basis of use in commerce, this means that the Chicago-based business was already selling or transporting its goods or selling its services to customers outside the state of Illinois when the application was filed. In this case, the business will have submitted a specimen showing how the trademark was being used, and the date they first used that trademark in commerce (across state lines) and the date they first used it anywhere. Trademark applications based on use in commerce that have gone through trademark publication with no oppositions will proceed to registration with no further action on the applicant’s part.
If the application was filed based on intent to use, this means that the applicant was not yet using the trademark in commerce. They may have been using it in the Chicago area, or the entire state of Illinois, or they may not have been using it at all yet. In this case, there is still another step for the applicant to complete before registration. When a trademark application has gone through trademark publication based on intent to use with no oppositions, the applicant will be sent a Notice of Allowance, informing them that their Statement of Use is due within the next six months. This Statement of Use is a written submission indicating the trademark is being used in commerce with the properly specified services or goods. The Statement of Use must also include a specimen showing actual use of the trademark in commerce for each class of services or goods the applicant indicated on their application.
If an acceptable Statement of Use is submitted, the trademark will be registered. If no Statement of Use is submitted, or the one that is submitted is not acceptable, the application will be considered abandoned. If the applicant is unable to submit their Statement of Use within the six month deadline, they should request an extension of the deadline to allow themselves more time to avoid their application appearing abandoned.
While it can take a long time for a trademark application to proceed all the way to registration, there are many times during the process where the applicant needs to be aware of what is happening and prepared to take action. A Chicago trademark attorney with Sullivan & Carter, LLP may be able to support you by monitoring the application’s status, monitoring the trademark publication for oppositions, responding to Office Actions, doing an initial trademark search before submitting your trademark application, and handling many other tasks associated with registering your trademark. Contact us by calling (929) 724-7529 to schedule a consultation where we may review your case and discuss your trademark registration options with you.
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