Trademark Opposition

What Is A USPTO Trademark Opposition?

Trademark oppositions before the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO) form a critical part of the trademark registration process.

A trademark opposition is a legal challenge to the registration of a trademark. After a trademark application has been examined by the USPTO and found to be eligible for registration, it is published in the USPTO’s Trademark Official Gazette (TOG). This is a public record of trademarks that seeking registration with the USPTO.

The publication initiates a 30-day period during which any third party who believes they would be damaged by the registration of the trademark can file an opposition. These third parties are usually businesses or individuals who believe that the registration of the trademark would infringe upon their own trademark rights.

Here’s an overview of the key aspects of the opposition process:

• Notice of Opposition: If a party chooses to oppose a trademark application, they must file a Notice of Opposition with the TTAB. This document outlines the grounds for the opposition, such as the likelihood of confusion with an existing registered or prior-pending trademark, descriptiveness, genericness, or fraud in the procurement of the trademark application.
• Response by the Applicant: Once a Notice of Opposition is filed, the applicant has 40 days to file a response, or the application will be abandoned. The response is an opportunity for the applicant to counter the claims made in the opposition.
• Discovery: After the initial pleadings (the Notice of Opposition and the applicant’s response), the parties enter a period of discovery. During this time, each party can request evidence and information from the other to help build their case.
• Trial Phase: After discovery, the parties enter the trial phase. Unlike a traditional trial, there is usually no live testimony in TTAB proceedings. Instead, each party submits written testimonies and evidence, as well as briefs outlining their arguments.
• Decision: After reviewing the evidence and arguments from both parties, the TTAB makes a decision. If the opposition is successful, the trademark application will not register. If the opposition is dismissed, the trademark application can proceed to registration.

Possible Grounds To Oppose A Trademark Registration

A party may oppose a trademark application for a number of reasons, all of which center on the belief that the registration of the proposed trademark will harm their own trademark rights or the public interest. Here are some possible grounds that may be cited in a trademark opposition proceeding before the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO):

• Likelihood of Confusion: This is one of the most common grounds for opposition. The opponent may argue that the proposed mark is so similar to their own registered or prior-pending mark, and that it’s used on related goods/services, that it’s likely to confuse consumers about the source of the goods/services.
• Descriptiveness: If the mark merely describes the goods/services or a feature or quality of them, an opposition can be made on this basis. A mark deemed merely descriptive can only be registered if it’s shown to have acquired distinctiveness.
• Genericness: If a party believes the mark is a generic term for the goods/services, they can oppose registration. Generic terms can’t be registered as they must be freely available for public use.
• Fraud: If the opponent believes that the applicant knowingly made false, material statements in the application, they can oppose on the grounds of fraud.
• Bad Faith: This can include instances where the applicant had knowledge of a prior user’s rights in a mark and applied to register the mark with the intent to block the prior user’s rights.
• Non-Use: The opponent can claim that the applicant has not used the mark in commerce for the goods/services listed in the application or didn’t have a bona fide intent to use the mark at the time the application was filed.
• Geographically Deceptive Misdescriptiveness: If the mark misleads consumers into believing the goods/services come from a specific geographic location when they do not, and this belief is a material factor in the consumer’s decision, the mark may be opposed on this ground.
• Deceptive Trademarks: An application can be opposed if the mark is deceptive, i.e., it is likely to cause consumer deception.
• False Suggestiveness: The opponent may argue that the mark falsely suggests a connection with persons, living or dead, institutions, beliefs, or national symbols.
• Dilution: If the opponent owns a famous mark, they may claim that the use of the proposed mark would dilute the distinctive quality of their famous mark, either through blurring or tarnishment.
• Violation of the Lanham Act: Other sections of the Lanham Act, which governs trademarks in the U.S., provide additional grounds for opposition, such as the prohibition against registration of flags and other insignia of the United States, or of any State or municipality, or of any foreign nation.

The most common reason for opposing a trademark registration before the TTAB of the USPTO often lies in a claimed likelihood of confusion with an existing registered or prior-pending trademark. In essence, the argument is that the proposed mark closely mirrors the opponent’s mark and is used on related goods or services, potentially leading consumers to confusion regarding the origin of the goods or services.

In order to prevail in such an opposition proceeding, the opposing party carries the burden of proof and must establish certain critical points. The first requirement is priority, meaning that the opponent must demonstrate that they have used their trademark in commerce prior to either the filing date or the use date of the applicant’s trademark. This demonstrates that they have earlier rights to the trademark.

Additionally, the opposing party must prove that there exists a likelihood of confusion among consumers due to the similarities between the two trademarks and their associated goods or services. This often involves an analysis of various factors, including the similarity of the trademarks in terms of appearance, sound, meaning, and commercial impression; the relatedness of the goods or services; the channels of trade and classes of consumers; the conditions under which sales are made and the “degree of care” exercised by the consumer; the strength of the opponent’s trademark; the number and nature of similar trademarks in use on similar goods; and any evidence of actual confusion. The test is not whether the trademarks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods offered under the respective marks is likely to result.

Overview of The Trademark Opposition Procedure

Opposing a trademark application is a legal process that occurs before the Trademark Trial and Appeal Board (TTAB). Moving forward to formally oppose a trademark registration usually starts after the examining attorney at the USPTO approves a trademark for publication in the Trademark Official Gazette (TOG), which is a weekly online publication.

Upon publication, a 30-day opposition period begins. Any party who believes they may be damaged by the registration of the trademark has the right to oppose its registration. This could be a party who believes the proposed trademark infringes on their own existing trademark rights, or otherwise would be detrimental to them or to the public interest.

The party wishing to oppose the trademark must file a Notice of Opposition with the TTAB during this 30-day period, or request an extension of time to file an opposition. This Notice of Opposition must include a statement explaining the grounds for the opposition, which could be any reason why the applicant is not entitled to register the trademark.

Once the Notice of Opposition is filed, the trademark applicant has 40 days to file an answer or the application will be deemed abandoned. If an answer is filed, the opposition then enters the discovery stage, which is a pre-trial procedure where both parties have the opportunity to gather information from each other.

After discovery, each party will have an opportunity to file motions, present evidence, and make arguments in a trial setting, though most TTAB trials are conducted in writing and don’t involve live hearings. Ultimately, the TTAB will issue a decision based on the pleadings, evidence, and arguments presented by both parties.

This is a broad overview of the trademark opposition process.  The specific rules and procedures for trademark oppositions can be found in the Trademark Board Manual of Procedure (TBMP).

Importance of Trademark Monitoring and Policing the Marketplace

Trademark monitoring and vigilant policing of the marketplace for similar or infringing marks are crucial aspects of safeguarding a company’s brand identity and value. When a company has a registered trademark, that trademark becomes an embodiment of the company’s reputation and its promise to consumers. If other businesses use similar or identical trademarks, it can dilute the unique identity of the original mark and potentially damage the trust and goodwill that a company has built with its customers over time.

Furthermore, the primary purpose of trademark law is to prevent consumer confusion about the source of goods or services. Therefore, if another business begins using a similar or identical trademark, especially within the same or related industry, consumers may be misled. They may mistakenly believe that the products or services are associated with or endorsed by the original trademark owner, which can lead to lost sales, damage to the brand’s reputation, and consumer disappointment.

In addition, by actively monitoring and policing its trademarks, a company can detect potential infringements at an early stage, which can significantly enhance the effectiveness of enforcement actions. Prompt action often leads to quicker and more cost-effective resolutions. Delay in enforcing trademark rights can not only lead to increased financial costs but also can result in legal disadvantages. For example, in some jurisdictions, prolonged inaction against a known infringement may lead to claims of acquiescence or abandonment, limiting the ability of the trademark owner to enforce their rights.

Moreover, the active policing of trademarks allows a company to maintain the strength and scope of its trademark rights. If similar trademarks are allowed to coexist in the marketplace without challenge, it could weaken the trademark and narrow its scope of protection. This could hamper the company’s future ability to prevent others from using similar trademarks and could even put the trademark at risk of becoming generic, which would mean losing all trademark protection.

Therefore, despite the costs involved, investing in a robust trademark monitoring and policing strategy is an important element of maintaining a strong and enforceable brand. It helps companies protect their investment in their brand, preserve customer trust, and maintain their competitive edge in the marketplace.  If you or your business would like assistance with setting up a trademark monitoring program, we can assist!  Please do not hesitate to reach out to our firm by completing our online contact form.  Our attorneys will make every effort to respond to all inquiries within one business day.