Searching for Trademarks That Have Been Published for Opposition

A trademark application appears on TESS at the USPTO web site within a few days of the application being submitted and remains there for a minimum of about 3-4 months (if there are no issues for refusals) before the trademark is approved for publication for opposition. This approval step is marked on the USPTO TSDR (Trademark Status and Document Retrieval) as ‘APPROVED FOR PUB - PRINCIPAL REGISTER’ . Note: This step may take much longer than 3-4 months if the trademark application did not meet USPTO requirements for the Right to Register. Note: marks on the Supplemental Register are not published for opposition.

This change in the record means that the USPTO believes the trademark would be entitled to registration under the current circumstances (assuming an acceptable AAU or SOU were filed for an intent-to-use application and that no new issues were found). If the application is an intent-to-use application, the examiner may re-examine an application when the Statement of Use (SOU) is filed because there may be new issues involved with the specimen submitted, new issues of likelihood of confusion with marks that registered during the lag time  or other issues.

When the APPROVED FOR PUB - PRINCIPAL REGISTER step is finished, the trademark application is given a date in the ‘Published for Opposition’ field that is 3-5 weeks after the date of APPROVED FOR PUB - PRINCIPAL REGISTER (This is a future date at this point, the actual publication has not taken place, just the approval.) In other words, 3-5 weeks before a mark publishes for opposition, the records show that it is going to publish and it can be searched and if applicable, an opposition planned for the  future 30 day period.

‘Published for Opposition’ Searches Using TESS

(Trademark Electronic Search System)

A Trademark Official Gazette (TMOG) “search line” is available from TESS where users can generate a list of all marks Published for Opposition in that TMOG, or a list of all new registrations published in that TMOG. TESS can be accessed at: http://tess2.uspto.gov/. The following 5 choices are available for general searching but only those marked A, B, and C below can be searched using the Published for Opposition field.

Select The Search Form

* New User Form Search (Basic)

A  * Structured Form Search (Boolean)

B  * Free Form Search (Advanced Search)

* Browse Dictionary (View Indexes)

C  * Search OG Publication Date or Registration Date

Note that users can refine their search so that they include only marks published in a particular TMOG that have particular characteristics, the examples used here is for IC 009 and the Trademark Official Gazette (TMOG) for several dates in 2013.  

A. Search the Published for Opposition Date field using * Structured Form Search (Boolean)

To generate a list of all the marks published for opposition in the TMOG of 19 March 2013 that identify goods classified in international class 9, enter the following into TESS at http://tess2.uspto.gov/ and select * Structured Form Search  

  1. In the “search term” line, enter 20130319;

  2. In the corresponding field line, select “Published for Opposition Date” from the pull-down menu;

  3. In the operator field, select “and” from the pull-down menu;

  4. In the “search term” line, enter 009; and

  5. In the corresponding field, select “international class” from the pull-down menu.

  6.  Submit Query

B. Search the Published for Opposition Date field using * Free Form Search (Advanced Search)

To generate a list of all the marks published for opposition in the TMOG of 19 March 2013 (always a Tuesday) that identify goods classified in international class 9, enter the following into TESS at http://tess2.uspto.gov/ and select * Free Form Search   

  1.  Search box enter the following: 20130319[PO] AND 009[IC]

  2.  Submit Query

More complex options are available:

International Class [IC]

This field identifies the class(es) assigned to a mark under the International Classification of Goods and Services (Nice Agreement) based upon the goods or services on which the mark is used. The International Classification has been the primary classification for marks in the United States since September 1, 1973.

TIP: Enter a numeric international class in quotes with leading zeros, if necessary.

Example: Enter "032"[IC]  or 032[IC] to retrieve documents classified in International Class 032.

Note: This International Class field is included for searching convenience, but the displayed International Class information is actually part of the Goods and Services [GS] text to allow for the searching of specific GS text terms occurring in a specific International Class. For example, the search ((IC WITH "032") SAME FRUIT)[GS] will retrieve only marks containing the word FRUIT occurring for International Class 032 in the Goods and Services statement.

Published for Opposition [PO]

This field contains the date that the application was published for opposition in the Trademark Official Gazette. Dates are stored in the format YYYYMMDD for the four-digit year YYYY, the two digit month MM and the two digit day DD. The $ (unlimited) and ? (single character) truncation operators are appropriate for use in date searches.

For example, the following search will retrieve all marks with a published for opposition date of April 30, 2013:      20130430PO]

Either of the following searches will retrieve all marks with a published for opposition date any time in April, 2013:      201304$[PO]      201304??[PO]

Alternatively, the ` operator can be used for numeric range searches on date fields. The following search will retrieve all marks with a published for opposition date in January 2013 or later:      `PO > "20130000"

The following search will retrieve all marks with a published for opposition date from January 2013 through December 2013.      `PO > 20130000 < 20140000

C. Search using Search OG Publication Date or Registration Date

To generate a list of all the marks published for opposition in the TMOG of 26 March 2013 that identify goods classified in international class 9, enter the following into TESS at http://tess2.uspto.gov/ and select * Search OG Publication Date or Registration Date   

  1. In the “OG Date” line, enter 20130326;

  2. In the corresponding field line, select “publish for opposition date” from the pull-down menu;

  3. In the operator field, select “and” from the pull-down menu;

  4. In the “search term” line, enter 009; and

  5. In the corresponding field, select “international class” from the pull-down menu.

  6. Submit Query

Please note that although the TMOG search line is specifically designed for searching particular issues of the TMOG, other search lines in TESS can be used to conduct more complex searches of individual TMOGs.

Please also note that whereas the TMOG is published each Tuesday, the TESS records for particular marks generally do not include the TMOG publication date for the mark until the following Wednesday. Hence, a search of a particular TMOG issue that is conducted on the day that issue is published may not yield any results.

FORM FILLING AND FORM FILING: Filling out the trademark application form is just one small step of a process for achieving A Strong Trademark through registration. Not Just Patents® Legal Services does NOT take the position that following quick easy instructions or SAME DAY SERVICE will actually result in a strong trademark registration. In 2012, there were 139,832 abandoned trademark applications (about 37% of disposals in 2012). Many, many trademark applications result in no federal trademark registration rights because the application did not support a registration. A federal registration on the Principal Register is not just a certificate that is obtained by filling out a form and paying fees, it is a property right (once granted) establishing not only legal rights but also legal liabilities.

Read the disclaimer that the typical form filling service has on their web page-they say that using their service is not a substitute for obtaining good legal advice.

We suggest our service and our method: Not Just Patents Five-Step Verification as part of a Plan for A Successful Trademark:

To Verify a potential trademark is strong, available to use, and ready to register, the process should be more than a direct hit federal search. To maximize the commercial strength and minimize the weaknesses of a trademark, a potential trademark user should:

1) Verify Inherent Strength,

2) Verify Right to Use,

3) Verify Right to Register,

 4) Verify the potential mark (as currently used) Functions As A Mark, and

5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing.

(*We don’t stop here but this is a good start. Call us if you want to plan for a strong mark.)

Call us at 1-651-500-7590  . We can help you to protect your trademark from infringing use. A federal registration is a very strong marketing tool and with it you can stop others from taking away your success.

What Does Published for Opposition Mean? Searching for Trademarks Published for Opposition Letter of Protest Letter of Protest TMEP 1715 Steps for a Trademark Opposition Steps for a Trademark Cancellation TBMP 112 Times for Taking Action TBMP 311 Form and Content of Answer TBMP 701 & 702 Time of Trial & Manner of Trial and Introduction of Evidence – In General TBMP 703 Taking and Introducing Testimony TBMP 704 Introducing Other Evidence Suggested Format for Petition to Cancel Notice of Cancellation

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