Start here
The Zest

Someone Just Filed a Name Close to Yours. Here's Your Window

Written by

"Someone just filed a trademark application for a name that's almost mine. Can I stop it?" Possibly, and timing decides how. There are two windows. While the application is being examined, anyone can send the USPTO evidence through a letter of protest. Once the mark is published, you have 30 days to oppose it, or to ask for more time to decide. Miss both, and what's left is a petition to cancel the registration after it issues.

Here's how each window works.

Where the windows sit in the process

After an application is filed, it waits for an examining attorney, who reviews it and either approves it or refuses it. When an application is approved, the USPTO publishes the mark in the Official Gazette. Publication is the public's formal chance to object. If nobody does, a use-based application goes on to register, and an intent-to-use application gets a notice of allowance.

So the timeline is: examination (letter of protest), publication plus 30 days (opposition), and after registration (cancellation).

Window one: a letter of protest

A letter of protest lets a third party put evidence in front of the examining attorney. It isn't a lawsuit, and filing one doesn't make you a party to anything. The USPTO's examination manual says the most appropriate time to file is before publication. It can also be filed up to 30 days after publication, but the bar is higher then: the evidence has to show, on its face, that a refusal is warranted.

What it can raise: evidence that the mark is likely to be confused with a federally registered mark or an earlier-filed pending application, that the mark is descriptive or generic, or that the specimen doesn't show real use. What it can't raise: your unregistered, common-law rights. For likelihood of confusion, the examining attorney can only consider registrations and prior pending applications. A claim that the applicant isn't the true owner is out, too.

The rules are tight. It's filed electronically, one submission per application, with a $150 fee. The evidence is capped at 10 items per ground and 75 pages total, and the index can't include legal argument. If it raises a ground the examining attorney already considered, the USPTO may not enter it. You'll get an acknowledgment and a notice saying whether the filing complied, and nothing more. You won't hear what the examining attorney does with it, the decision can't be appealed, and your involvement ends when you file. If the examining attorney decides to refuse on that ground, the applicant hears about it in an office action.

A letter of protest fits best when the problem is already on the record, like your own registration or earlier application, or plain evidence that the name just describes the product. (Descriptive names are weak names for exactly this reason.)

Window two: the 30-day opposition period

Once the mark is published, anyone who believes they'd be damaged by the registration can file a notice of opposition within 30 days. An opposition is a real proceeding before the Trademark Trial and Appeal Board, closer to a lawsuit than a letter: pleadings, evidence, deadlines and a decision.

Here's the big difference from a letter of protest. An opposition can rest on earlier use, not just registrations. The Trademark Act bars registering a mark likely to cause confusion with a registered mark or with a mark previously used in the United States by someone else and not abandoned. If you were using your name first, even without a registration, this is where that counts.

One trap: filing a letter of protest does not pause or extend the time to oppose. If you're doing both, keep the opposition deadline on your calendar.

Extensions: buying time to decide

Thirty days isn't long. If you need time to gather evidence, talk to the applicant or get advice, you can request an extension of time to oppose, as long as you file before the current deadline runs out.

The structure is set by rule. Your first request can be for 30 days, which is granted on request, or 90 days, which requires good cause. After a 30-day extension, you can ask for 60 more, again for good cause. One final 60-day extension is available only with the applicant's consent or extraordinary circumstances. All together, extensions can't run past 180 days from publication. The USPTO notifies the applicant of each extension, so asking for one tells them someone is paying attention, which can open the door to a conversation about settling.

What it costs in government fees

Under the fee schedule that took effect January 18, 2025, a letter of protest is $150 per application. The first 30-day extension of time to oppose has no fee. A first 90-day extension or a second 60-day extension is $200, and the final 60-day extension is $400. A notice of opposition is $600 per class, filed electronically, and a petition to cancel a registration is also $600 per class. Those are government fees only. An opposition is litigation, and the work is where most of the cost sits. For the fees on the filing side, see what a trademark costs.

If both windows close

Once the mark registers, the route is a petition to cancel. Within five years of the registration date, the broader grounds are available, including likelihood of confusion with your earlier rights. After five years, the grounds narrow to things like genericness, abandonment and fraud. Waiting rarely makes this easier.

If a filing close to your name just turned up and you want to know which window you're in, you can see how the search and filing packages work on the services page, and the FAQs page answers most of what comes up before a first call.

Book a free 15-minute discovery call with the attorney (opens in a new tab)

(No legal advice is given on the discovery call. It's a chance to tell me what you're building and hear how the process works.)

Sources

This article is general information, not legal advice. Reading it does not create an attorney-client relationship.

Start here