What Does “Publication” Mean?

One of the most pivotal phases of the trademarking process occurs in what is called the “publication phase”. From an attorney’s standpoint, this is one of the most exciting emails to receive, as it means that the application has successfully passed what is called the “office action” phase- meaning, the examining attorney assigned with reviewing your application has no further required amendments, and has allowed the application to pass.

The “publication” or “opposition period” is simply a thirty day period where your application is posted in the Trademark Gazette, which allows third parties to give a “Notice of Opposition” if they believe they could be damaged by the registration of your trademark. In other words, if a company thinks that your proposed mark is too similar to their own, they have the opportunity to come forward and challenge your mark, only in this thirty day period. This is critically important to note: this is yet another reason why running a legal due diligence search prior to the filing of your trademark application is so important, as the search should flag any potential opposers who may come forward.

Though it is possible for someone to do so, this situation is actually pretty rare, for a few reasons. First, the examining attorney reviewing your application will run a stringent search to see if your application risks a potential “likelihood of confusion” with another registered mark. Examining attorneys, particularly at the time of this writing, are extremely liberal in terms of what they consider to raise a potential likelihood of confusion. Second, opposing a trademark is not cheap, and it automatically kicks the proceeding into what is known as the “Trademark Trial and Appeal Board”, which is essentially a federal court proceeding. Below, you can see not only how expensive initial filing fees are, but the vast number of motions that can be filed in such an action.

Taking each of these factors into consideration, and looking at the scenario from a place of logic, you can see what oppositions can be considered rare (particularly among entrepreneurs). When estimating costs, we advise our clients that opposition proceedings typically begin in the $2,500 range, and can very easily jump into the $20,000-$50,000 range. In order to be successful in such a proceeding, the movant must successfully provide evidence that circumvents the examining attorney’s failure to find a likelihood of confusion, and then must be willing and able to fight, frankly, an expensive battle. In summary, often times, parties engaged in an opposition proceedings will result in settlement agreements out of court.

If no third party files a Notice of Opposition during the publication period, your trademark will continue through the registration process. Even if your trademark makes it to the “approved for publication” stage, this does not mean your trademark is registered, but it does mean you are highly likely to make it to the end and get your registration!

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