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Who can initiate an opposition to a trademark, either during or after the process of...

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ltacher | Student, Undergraduate | Honors

Posted November 10, 2013 at 10:04 PM via web

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Who can initiate an opposition to a trademark, either during or after the process of registering the trademark with the USPTO?

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Tamara K. H. | Middle School Teacher | (Level 1) Educator Emeritus

Posted November 30, 2013 at 1:10 AM (Answer #2)

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Any third party may oppose the registration of a trademark.

Once a trademark has been filed for registration, the United States Patent and Trademark Office(USPTO) will publish the trademark in the Official Gazette to give others the opportunity to oppose the mark. However, prior to publication in the Official Gazette, the trademark will first be reviewed by the USPTO's Trademark Trial and Appeal Board, which is run by many trademark experts and examining attorneys. The trademark is only published in the Official Gazette if the examining attorney on the Trademark Trial and Appeal Board approves the mark as being registrable.

Once the trademark is published in the Official Gazette, any third party has the right to oppose registration of the mark for 30 days after the mark's publication, though the USPTO may extend the 30-day period if requested to do so in writing. The opposing third party will file an application with the Trademark Trial and Appeal Board of the USPTO either electronically or in paper, depending on which law the party is filing under, such as Section 1, Section 44, or Section 66, which also depends on if the mark was filed in the US or in a foreign country. Once an opposing party files, the Trademark Trial and Appeal Board will hear the case and decide if the registration of the trademark should be canceled ("Fact Sheets: Protecting a Trademark").

Any third party may also oppose a trademark even after the mark has been officially registered, so long as it is still within the five-year period after the trademark has been published in the Official Gazette.

Naturally, having an attorney can assist the opposition process, especially appealing the opposition process, but an attorney is of course not necessary. Any third party may oppose a trademark.

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eir | College Teacher | (Level 3) Adjunct Educator

Posted November 11, 2013 at 12:40 AM (Answer #1)

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When an application for a trademark is initially filed, a USPTO attorney has the first right to oppose the trademark. They check the trademark for statuary compliance, that is, to make sure it's not breaking any laws. Once the USPTO is satisfied that it is an available mark, the next steps progress.

When your trademark is approved by the attorney, the U. S. Patent and Trademark Office (USPTO) publishes your intent to register the trademark in the Official Gazette.  In the thirty days following publication any person "natural or legal" can oppose the trademark. 

By "natural or legal" person, the USPTO means that since corporations are recognized as persons, corporations can file opposition too.

A person usually opposes a trademark because:

  • it may be confused with a previously existing trademark.
  • the trademark is descriptive of or too close to a description that others are registered to use.

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