Searching for Trademarks That Have Been Published for Opposition

(or will be published for opposition soon)

A trademark application appears on TESS at the USPTO web site within a few days of the application being submitted and remains there. It is about 3-4 months* before the application is examined and before the trademark is approved for publication for opposition if there are no refusals. 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.

* note that a Petition to Make Special may result in the application being examined much sooner.

This APPROVED FOR PUB - PRINCIPAL REGISTER 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 a particular date in 2021.  

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  07 September 2021 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 20210907;

   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

[This TESS search brought up 983 Records]

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  07 September 2021  (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: 20210907[PO] AND 009[IC]

   2.  Submit Query

[This search brought up 983 records.]

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 07 September 2021:      20210907[PO]

Either of the following searches will retrieve all marks with a published for opposition date any time in September 2021:      202109$[PO]      202109??[PO]        

[33023 records]

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 2021 or later:      `PO > "20210000"

The following search will retrieve all marks with a published for opposition date from January 2021 through December 2021.      `PO > 20210000 < 20220000

Note that  some searches on TESS will also pick up trademark applications that are scheduled for publishing for opposition that haven’t happened yet.

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  07 September 2021 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 20210907;

   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.

Please note also that the ‘published for opposition date’ can also contain future dates! As soon as an opposition date is set, this field is populated EVEN IF IT HASN’T OCCURRED YET.

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. Many, many trademark applications (about half) 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.

Verify/Check Whether Your Claimed Trademark Is Trademarkable

1. Verify/Check Inherent Strength  Does each trademark consist of inherently distinctive element(s) that can be claimed for exclusive use?

Marks that are merely descriptive (or worse, generic) are hard to register and hard to protect. Section 2(e) refusals are very common refusals. Whether a trademark is merely descriptive depends on the goods and services description. Facts Matter.

2. Verify/Check Right to Use  Does the trademark have a likelihood of confusion with prior-used trademarks (registered or unregistered)?

Section 2(d) refusals are very common refusals. Facts Matter.

3. Verify/check Right to Register  Does the trademark meet the USPTO rules of registration? (Does not have any grounds for refusal?)

4. Verify/check Specimen  Is the trademark used as a trademark or service mark in the specimen? Note that the USPTO will not accept webpage specimens that are not self-authenticating after the rules change in October 2019.

Specimen refusals are very common refusals. The right type of specimen for any particular application depends on what the goods or services are. Facts Matter.

5. Verify/check Goods and Services ID   Is the goods/services identification definite and accurate? Is the goods/service ID as broad as it should be under the circumstances or will a narrower description distinguish it better?

ID refusals are common too but getting the right description identifies the scope of protection. Too narrow of a description can yield narrow rights. Too broad of a description can result in an unnecessary likelihood of confusion with someone else. Facts Matter.