You might see the phrase “published for opposition” when you check the status of your trademark application on the United States Patent and Trademark Office (USPTO) website. The meaning of “published for opposition” is something that all owners of pending trademark applications should understand because it can be the most consequential part of the entire US trademark application process.
Current and prospective clients ask me all the time, “How long to register a trademark in the US?” Unfortunately, there’s no one-size-fits-all answer to that seemingly simple question. Depending on your particular situation, it could be a little over a year. But, in some cases, it could take many years. The good news is that no matter how long it takes for the United States Patent and Trademark Office (USPTO) to issue the Certificate of Registration, all of your federal trademark rights date back to the filing date of your trademark application. In other words, it’s not the actual registration date that matters. In fact, the registration date is only relevant to calculate trademark registration renewal and maintenance deadlines. It’s the application filing date that reserves your nationwide priority to use your trademark in connection with the advertising and sale of the products/services listed in your application.
After you file your trademark application, the United States Patent and Trademark Office (USPTO) may issue a trademark office action indicating that your mark is being refused registration on the basis that it’s merely descriptive of your products and/or services. This merely descriptive trademark refusal is based on the examining attorney’s belief that your mark merely describes a characteristic, feature, quality, function, or purpose of the products/services listed in your application. Descriptiveness refusals are extremely common because people who file their own trademark applications or use a trademark document preparation service like LegalZoom, Trademarkia, or Trademark Engine aren’t generally aware that registering merely descriptive words and phrases as trademarks can be very difficult, if not impossible.
The Section 15 Declaration of Incontestability is a document that’s filed with the United States Patent and Trademark Office (USPTO) for the purpose of making a federally registered trademark incontestable. The Section 15 Declaration may only be filed if (1) the mark is registered on the Principal Register (not the Supplemental Register), (2) the mark is still in use in commerce, and (3) the mark has been in continuous use for five consecutive years subsequent to the date of registration. Once the USPTO acknowledges the Section 15 Declaration, the trademark owner’s right to use its mark in commerce in connection with the products/services listed in the registration becomes incontestable. Please note that the Section 15 may be filed in combination with the Section 8 Declaration of Use or the Section 71 Declaration of Use, but it does not have to be.
The issue of Supplemental Register vs. Principal Register frequently arises during the US trademark application process. If you’ve read my article titled “What is the Supplemental Register for US Trademarks?,” you already know that the United States Patent and Trademark Office (USPTO) maintains two separate trademark registers. To recap, the Principal Register is reserved for trademarks that are considered under the law to be “distinctive.” In contrast, the Supplemental Register is for non-distinctive marks, which are trademarks that have not yet acquired distinctiveness or “secondary meaning” in the minds of consumers. I encourage you to read my previous article regarding the Supplemental Register so that you better understand the information presented here.
