Publication for Opposition

If the PTO has no objections to the application or the applicant successfully overcomes all objections, the examining attorney will approve the mark for publication in the OG, a weekly publication of the PTO. The PTO sends a notice informing the applicant of the date of publication. Publication in the OG is intended to provide notice to the world so that anyone who believes he or she may be damaged by registration of the mark can oppose its registration. Many large companies subscribe to watch services provided by the trademark search professionals identified in Chapter 3. Those search companies review newly filed applications and the OG and then notify companies of potentially conflicting marks.

Oppositions must be filed within 30 days after publication in the OG. If additional time in which to oppose is desired, a written request for the extension must be filed before expiration of the 30 days. There is no fee for requesting an extension. Extensions often are sought to give a party time to evaluate whether the mark applied for is a threat or to allow the parties to negotiate their differences. A first extension of time for 30 days is granted upon request without any showing of good cause. The TTAB may grant further extensions of time for good cause up to a total of 120 days from the date of publication. The requirement of good cause typically is satisfied by a statement by the potential opposer that it needs the additional time to evaluate whether registration of the mark will cause damage. Additional extensions beyond the 120-day total are granted only if the applicant consents.

Anyone who believes he or she would be damaged by the registration of a mark on the Principal Register may oppose registration by filing a notice of opposition with the TTAB. The filing fee is $300 per class of goods or services. The notice of opposition looks much like a complaint that initiates a lawsuit. The applicant then responds to the notice of opposition. Discovery may commence and briefs are submitted to the TTAB, which renders a decision based solely on the written briefs and other documents. Personal testimony is not given. Like most lawsuits, the vast majority of oppositions are resolved by voluntary agreement.