Check out the full video on our Youtube!

The USPTO publishes every trademark application in its Official Gazette for a 30-day opposition window before it proceeds to registration. If a third party files an application for a mark that conflicts with yours — and you miss that window — the applicant gets registered and you're left fighting an uphill battle against an owner with a federal registration. Active trademark monitoring is the mechanism that prevents this from happening. But for many Louisiana business owners who filed their mark and moved on, the monitoring step was never set up. Understanding what your options are when a conflicting application appears — whether you catch it early or discover it after registration — is essential for protecting a brand you've built.

The 30-Day Opposition Window: Use It or Lose It

When the USPTO approves a trademark application for publication, it appears in the Official Gazette and any party who believes they would be damaged by the registration has 30 days to file an opposition or request an extension of time to oppose. An extension request extends the window by 90 days, giving you time to evaluate the conflict and decide whether to oppose.

Opposing a trademark application is a formal proceeding before the Trademark Trial and Appeal Board (TTAB). You don't need to prove that the applicant infringed your mark — you need to show that you have prior rights and that registration of the conflicting mark would damage you by creating a likelihood of confusion. The burden is lower than in litigation, and an opposition is far less expensive than a federal lawsuit.

Trademark Monitoring: How to Catch Conflicts Early

The USPTO doesn't notify existing registrants when a conflicting application is filed. Monitoring is the registrant's responsibility. For a business whose brand is central to its commercial identity, setting up monitoring — either through a trademark monitoring service or through USPTO's own TESS database — is a basic maintenance step after registration.

Monitoring covers more than just identical marks. A monitoring strategy should flag marks that are phonetically similar, visually similar, or similar in meaning to your mark — and that are filed in the same or related classes of goods and services. The scope of what counts as confusingly similar is broader than most business owners assume.

What to Do When You Find a Conflict After Registration

If a conflicting mark has already registered and you missed the opposition window, your options are more limited but not exhausted. You can file a petition to cancel the registration with the TTAB if you can demonstrate prior use of your mark or another ground for cancellation. Cancellation proceedings are similar to opposition proceedings and can be filed at any time during the life of the registration.

Alternatively, you can send a cease and desist letter asserting your prior rights and requesting that the registrant stop using the mark. If the other party's use began after yours and you have superior common law rights, you may have leverage even against a registered mark — particularly in Louisiana, where your documented prior use in commerce creates enforceable rights.

When the Conflict Is a Cybersquatter or Bad-Faith Filer

Some trademark filings are made in bad faith — to block a competitor, to extract a licensing fee, or to register marks that belong to someone else. The USPTO has procedures for addressing bad-faith filings, including opposition proceedings that can raise fraud on the USPTO as a ground.

For domain name conflicts that accompany trademark issues, the Uniform Domain-Name Dispute-Resolution Policy (UDRP) provides a faster and less expensive mechanism than federal litigation for recovering domains registered in bad faith. For Louisiana business owners dealing with both a trademark conflict and a domain dispute, addressing both in a coordinated strategy is more effective than handling them separately.

Frequently Asked Questions

Q: How do I find out if someone has filed a trademark that conflicts with mine?

The USPTO's TESS database is publicly searchable and free to use. Trademark monitoring services provide automated alerts when new applications are filed that match defined search criteria. For a brand with significant commercial value, professional monitoring is worth the cost.

Q: What is the difference between a trademark opposition and a cancellation?

An opposition is filed before the mark registers, during the 30-day publication window. A cancellation is filed after registration and can be brought at any time, though certain grounds are time-limited. Both proceedings are heard before the TTAB.

Q: Can I oppose a trademark application without a federal registration of my own?

Yes. Common law trademark rights based on prior use in commerce are sufficient to support an opposition. You don't need a federal registration to oppose someone else's application — you need to demonstrate that you used the mark first and that the applicant's registration would damage you.

Q: What happens if I win a TTAB opposition — does that mean the other party can't use the mark at all?

A successful opposition prevents the applicant from obtaining a federal registration, but it doesn't automatically enjoin the party from using the mark. If they continue to use the conflicting mark after losing the opposition, you may need to pursue a separate infringement action to obtain an injunction.

If you've discovered a trademark application or registration that conflicts with your brand, the response strategy matters. Schedule a consultation with BLGbefore the opposition window closes.