What is a trademark Notice of Publication?

A Notice of Publication in a trademark application is good news for the applicant. It means that the trademark application has received preliminary approval by the USPTO trademark examining attorney, i.e., the trademark examiner. The applicant is one step closer to a trademark registration. Before reaching registration, however, the public will have an opportunity to challenge the pending trademark application.

If you responded to a trademark Office Action with arguments against a trademark rejection, then a Notice of Publication means that your arguments were successful. Your Office Action response successfully persuaded the trademark examining attorney to withdraw the refusal to register.

What if you do not receive a Notice of Publication?

The USPTO trademark examining attorney must approve of a pending trademark application before it can be published. Therefore, not all trademark applications will reach publication, especially if an applicant fails to overcome any rejections in an Office Action.

What are the trademark publication timelines?

After examination and preliminary approval of the mark is provided by the trademark examining attorney, the USPTO will publish the mark for opposition in the Official Gazette, a weekly USPTO publication. A variety of electronic watch services are provided for trademark owners seeking to monitor any marks that may be too close to their registered trademarks.

What can happen when a trademark application is published for opposition?

When a trademark application is published for opposition, any third party who believes it may be damaged by the registration of the mark may file an opposition with the USPTO Trademark Trial and Appeal Board (TTAB). A third party may also file an extension of time to oppose if more time is required to investigate the possibility of an opposition.

The USPTO will send a Notice of Publication to the applicant stating the date of publication, which starts the 30-day period.

What happens after a trademark is published for opposition?

If no oppositions or extensions of time are filed, then a use-based application will proceed to registration. Keep in mind that third parties who fail to oppose your application may still file a cancellation after your trademark is registered.

If an application was based on an intent-to-use (ITU), a Notice of Allowance will be issued which then provides the applicant with a 6-month deadline for filing a Statement of Use. If the applicant has not yet used the trademark in connection with the goods or services identified in the ITU application by the 6-month deadline, an applicant may request further 6-month extensions of time for submitting use of the trademark for a maximum total of three years from the Notice of Allowance date.

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Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys work as a team to equip startups and founders with solid IP rights that facilitate funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com