Trademark opposition proceedings can be costly for trademark applicants.  Therefore, being prepared is always the best defense.

When a brand owner’s trademark application is opposed,  there is a helpful checklist that it should consider.   By doing so, it will help the applicant assess the merits of the case, and determine the best course of action moving forward.   Here are some of the top defenses that can call into question the likelihood of success of a trademark opposer’s claims:

Lack of standing.  Standing is a threshold issue that an Opposer must establish before the merits of the case are even considered.   It is required in every inter partes proceeding before the Board.  This is to determine that there is an actual case or controversy between the parties.   Standing requires that the Opposer show a real interest in the outcome of the proceeding, as well as a reasonable basis for its claim of being damaged should the Applicant’s trademark registration issue.

Lack of priority.    A trademark opposer must show that its trademark rights are superior to those asserted by the Applicant.  Trademark Rule 2.122(b)(2) provides that it is not merely enough for an opposer to rely on its date of first use of a mark shown in its trademark registration.  Rather, the Opposer must prove, through competent evidence, that its first use dates are prior to those claimed by the Applicant. 

No likelihood of confusion.   In cases where it is alleged that the Applicant’s mark is likely to cause confusion with the Opposer’s mark under Section 2(d) of the Trademark Act, the Trademark Trial and Appeal Board will look to the factors for likelihood of confusion set forth in the case In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 (CCPA 1973).   Some of the  DuPont factors that the TTAB will consider in its analysis include:

  • the similarity or dissimilarity of the marks
  • the similarity or dissimilarity of the goods (or services)
  • the fame of the prior mark
  • actual confusion

Since the TTAB places greater weight on the similarity of the parties’ marks and the similarity of their goods and/or services, special consideration of these two factors should be made.

The above discussion contains just some of the considerations that an Applicant should review in determining the merits of a trademark opposer’s case.   Where a Notice of Opposition does not contain these elements, or if the evidence does not support it, the Applicant should pursue applicable affirmative defenses and other remedies that may be available.

Carl’s Jr. has prevailed in a surprising trademark opposition before the United States Trademark Trial and Appeal Board.

In Carl’s Jr. Restaurants LLC v. AKM Food Svcs. LLC., the Applicant, AKM filed a trademark application for THE GREEN PEPPER in standard characters, for restaurant services in International Class  43.   Carl’s Jr. filed a notice of opposition to oppose the application based on a likelihood of confusion with its family of GREEN BURRITO marks, including the following:

  • Reg. No. 3015454 for the mark GREEN BURRITO (“Burrito” disclaimed) in standard characters for restaurant services in International Class 43;
  • Reg. No. 2924101 for the mark GREEN BURRITO & Design (“Burrito” disclaimed) for restaurant services in International Class 43;
  • Reg. No. 1689454 for the mark THE GREEN BURRITO & Design for restaurant services in International Class 43; and
  • Reg. No. 3526233 for the mark GREEN BURRITO in standard characters for various food items for consumption on and off the premises in International Class 29 and 30.

In analyzing the likelihood of confusion factors, the Board affirmed that two key considerations are the similarities of the marks and the relatedness of the goods and/or services.  In comparing the Opposer’s GREEN BURRITO word mark for restaurant services and applicant’s THE GREEN PEPPER mark for restaurant services, the Board concluded that the dominant portion of the parties’ marks was the word “green,” and given the fact that they both appeared as the first part of a compound mark, that “green” was the term that purchasers would most likely remember.   The Board further noted that similarity in any one of the elements of sound, appearance, meaning, or commercial impression is sufficient to support a finding of likelihood of confusion — in appropriate cases.    Given the additional fact that both marks were for restaurant services,  the Board concluded that a likelihood of confusion indeed could exist and therefore sustained the opposition on the issue of likelihood of confusion in favor of Carl’s Jr.

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What happens when a trademark application is opposed and then the Opposer does not follow the rules?   In the case of West Indies Trading Company LLC v. Nicole Averette, a quick dismissal that is a lesson in the importance of form over substance.

In West Indies, the trademark Opposer filed a trademark opposition against Applicant’s mark NIKKI VS NICOLE for dresses, shirts, shorts, and swimwear in International Class 25.   The mark was opposed based upon a likelihood of confusion under Trademark Act Section 2(d) based on Opposer’s six trademark registrations for marks containing the words NIKKI BEACH for a wide variety of goods and services as well as Opposer’s alleged common law mark NIKKI BEACH for “clothing, sun care products and related merchandise that have included fragrances.”  The Opposer cited as additional grounds that its NIKKI BEACH mark had become famous and that Applicant’s mark would dilute the distinctive value of Opposer’s marks.  Applicant filed an Answer but neither side submitted any evidence or took testimony during their trial period.  Opposer did, however, file a brief in the case.

The Record on which the Board rendered its decision consisted only of the pleadings and Applicant’s trademark application.  Most importantly, Opposer’s trademark registrations were not made of record nor was there any other testimony or evidence.  In ruling against the Opposer, the Board made the following observations on how Opposer missed several opportunities to introduce its registrations into evidence.  For example:

  • opposer could have attached to its Notice of Opposition status and title copies of its registrations; or
  • a current copy of its registrations from the USPTO’s electronic database; or
  • introduced the registrations through its notice of reliance or through its witnesses during the testimony period

Although Opposer did submit copies of its registrations with its brief, the Board held that it was too late in the proceeding to do so and therefore the registrations were inadmissible.  In addition, the Board ruled that the Opposer failed to establish its standing but nonetheless recognized Opposer’s standing to bring its opposition based on admissions in Applicant’s answers.  In the end, however, Opposer’s failure to present admissible evidence of its registrations or prior use doomed its Opposition without it ever proceeding to a decision on the merits.

The lesson?  Always be sure to follow the rules as found in the Trademark Board Manual of Procedure. 

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Given the burden of proof necessary to establish a finding of trademark genericness, it comes as no surprise that a recent Trademark Trial and Appeal Board decision affirmed this principle of trademark law.

In the trademark opposition case Frito-Lay North America Inc. v. Real Foods Pty. Ltd.,  Applicant sought to register two trademarks, CORN THINS for “crispbread slices primarily made of corn” and RICE THINS for “crisp bread slices primarily made of rice.” (the “THIN marks”).   The terms corn and rice were disclaimed in the applications.   The Opposer, Frito-Lay, in its notice of opposition, alleged that Applicant’s THIN marks were generic names for Applicant’s respective goods; highly descriptive of Applicant’s goods so as to be incapable of acquiring distinctiveness; and merely descriptive of  crispbread  made of thin slices of corn or rice, without evidence of acquired distinctiveness.

The Trademark Trial and Appeal Board recognizes a two-part test for genericness:

(1) what is the genus of goods or services at issue; and

(2) does the relevant public understand the designation primarily to refer to that genus of goods and services.

In doing so, the relevant consuming public’s perception is the primary consideration.   Such evidence may be in the form of consumer surveys, dictionaries, trade journals, newspapers, or other credible sources.   Here, the Opposer introduced evidence to support its claim that RICE THINS and CORN THINS are generic, including dictionary definitions, examples of Opposer’s own use of “thin” for its various snack product, as well as third-party marketplace uses.  In addition, Opposer introduced various internet search results for use of “thin” to promote third-party snack products.   To refute the claim of genericness, Applicant submitted the trademark registrations of numerous third-parties who have received registrations for marks containing the word “thins” in connection with snack and food products that did not include a disclaimer for the “thin” portion of the marks.    Here, the Board concluded that based upon the totality of the evidence, “thins” was not generic due to the various marketplace use of thins in combination with various food items and as a source-indicator for third-party products.

The Board went on to discuss whether RICE THINS and CORN THINS were incapable of acquiring distinctiveness, which could occur if the word or phrase being considered is so laudatory or descriptive as to be incapable of acquiring distinctiveness.  Here, the Board found that “corn thins” and “rice thins” were not so highly descriptive or laudatory so as to prevent the terms from being source indicators of Applicant’s products.  However, at the end of the day, what was required of Applicant was that it had to make a showing that its “thins” marks were not merely descriptive of  its goods.  Applicant failed to do so, due in part to its lack of substantial sales or advertising expenditures connected with its rice thins and corn thins products.  Accordingly, Applicant, having failed to establish evidence of acquired distinctiveness, was refused registration and the opposition was sustained on the ground that Applicant’s marks were merely descriptive and did not acquire distinctiveness.

 In the trademark opposition case, Halo Trademarks Limited v. Halo 2 Cloud LLC,
Trademark imagethe Opposer opposed the intent to use application of Applicant’s mark HALO  for handbags, briefcases,  electric adapters and a wide variety of other business accessories on the ground of likelihood of confusion under Section 2(d) of the Trademark Act.  As the basis for its opposition, Opposer relied on its previously used HALO and HALO and Design marks for numerous business accessories in International Class 18, including certain goods applied for by Applicant.
To prevail on a likelihood of confusion claim brought under Trademark Act Section 2(d), a party must first prove that:
  • it owns “a mark registered in the Patent and Trademark Office or a mark or trade name previously used in the United States …and not abandoned….” Trademark Act Section 2, 15 U.S.C. § 1052.

Here, the Opposer did not have a registration for its own HALO marks and therefore was required to establish its prior proprietary rights in and to the mark through testimony and documentary evidence showing actual use or use analogous to trademark use.   Accordingly, the Opposer sought to rely on its intent to use application for HALO to establish constructive use priority rights in and to the mark.  The filing date of Opposer’s intent-to-use applications was March 19, 2010, which preceded Applicant’s filing date of its HALO mark of May 5, 2014.  Neither party took testimony evidence and submitted notice of reliance of their respective applications and discovery requests and responses.

The  U.S. Trademark Trial and Appeal Board ruled that the Opposer was entitled to rely on the filing dates of its intent to use applications to establish constructive use of its HALO mark as of that date pursuant to Section 7(c) of the Trademark Act.  That being said, in order to prevail based on trademark priority, any judgment entered in favor of the Opposer would be contingent on the Opposer actually using its marks in commerce and registration issuing on its pending applications.  In addition to establishing priority of rights, the Opposer would still have to bear its burden under Section 2(d) that Applicant’s HALO mark was likely to be confused with the HALO marks of Opposer.
The Board concluded that the parties’ respective marks as examined in connection with the goods and respective trade channels, pointed towards the conclusion that they were confusingly similar in sight, sound, meaning, and commercial impression such that the Opposition should be granted and registration refused.   Therefore, the Board entered judgment, contingent on the issuance of the Opposer’s pending applications.

 

Not all trademarks are created equal.

In a decision of a rarely invoked dictum of trademark law, the U.S. Trademark Trial and Appeal Board ruled that the phrase I BELIEVE THAT WE WILL WIN failed to function as a trademark and thus was not entitled to registration.  The case, United States Soccer Federation, Inc. v. Aztec Shops, Ltd., provides a good example of how to take into account all components of an effective trademark opposition strategy.

In United States Soccer Federation, the applicant sought registration of the mark “I believe that we will win” for a wide-variety of sports and promotional apparel in International Class 25.   The Opposer, U.S. Soccer Federation, opposed the trademark application on the grounds that it failed to function as a trademark under Sections 1, 2 and 45 of the Trademark Act.

Section 45 of the Trademark Act defines a trademark as “any word, name,symbol, or device, or any combination thereof– (1) used by a person. . . to identify and distinguish his or her goods . . . from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”   Not every phrase used in connection with the promotion of goods or services necessarily is a trademark and it is incumbent to examine how the phrase is used.   Slogans or other terms that are merely considered to be informational in nature or express support, admiration, or affiliation are generally not registrable.  The more common a phrase, the less likely that public will perceive it to be emanating from a single source.  Here, the Board focused on how the phrase “I believe that we will win” is viewed by the relevant general public when used in the marketplace.   The evidence submitted by Opposer revealed that “I believe that we will win” has been chanted at sporting events for years predating the Opposer as well as other public events.  The fact that the Applicant had sold thousands of dollars worth of promotional merchandise bearing the mark could not negate the fact that consumers viewed the mark as famous and ubiquitous in and of itself, separate and apart from Applicant’s attempts to appropriate it as a single-source identifier for Applicant’s goods.  As a matter of competitive policy, the Board ruled that the Applicant did not have the right to appropriate the phrase so widely-used by numerous groups and individuals in an attempt to gain exclusive rights.

The ability of a phrase to function as a trademark is the first-step in determining whether the phrase is entitled to trademark protection.

https://tsdrsec.uspto.gov/ts/cd/casedoc/sn86584756/DRW20150404084806/1/webcontent?scale=1

What’s in a name?  In the case of two publicly-known personalities and merchandisers, it could mean millions of dollars.

Kylie Minogue, singer and actress, has filed a notice of opposition with the U.S. Trademark Trial and Appeal Board against Kylie Jenner’s application for registration of the mark KYLIE for a wide variety of goods and services in the advertising and entertainment fields.  In doing so, Ms. Minogue has claimed that the daughter of Caitlyn and Kris Jenner is causing dilution of her own KYLIE MINOGUE and KYLIE marks, claiming priority use of the name that Ms. Minogue has used for years in connection with her various business and entertainment brands.  While both parties have United States registrations for KYLIE MINOGUE and KYLIE JENNER respectively, the main tussle here is who has rights in and to the name KYLIE as a stand alone trademark.

Ms. Minogue’s trademarks, protected under Section 44 of the Trademark Act and first registered in 2006,  cover a wide variety of goods and services, including perfumes, musical recordings, and entertainment services.

Ms. Jenner is the owner of a U.S. Registration for KYLIE JENNER for entertainment services, claiming a first use date of 2007.   This registration was cited against an application for KYLIE for entertainment services in the name of Ms. Minogue.  Not to be outdone, only a couple of days ago, Ms. Jenner upped the ante by applying for the mark KYLIE COSMETICS, despite the preexistence of the mark KYLIE MINOGUE for goods in the same class.   This development, may be due in part, to Ms. Minogue’s description of Ms. Jenner in pleadings filed with the Trademark Office that allege that Ms. Jenner’s reality television reputation is tarnishing Ms. Minogue’s trademarks and brand.

This trademark opposition dust-up has been reported in World Intellectual Property Review, the Australian media, and entertainment publications everywhere.  Should things get too provocative in the Trademark Office with the back and forth filing of additional trademark applications, Ms. Minogue may seek to take matters into her own hands by bringing an action in federal district court for trademark infringement and dilution.

This dispute is not going away anytime soon, particularly when it comes to the Kardashian/Jenner clan’s interest in seeking to continue to monetize the allure of its brand after all these years.  With both parties having seemingly unlimited resources and revenue opportunities at stake, be prepared for a long battle.

https://tsdrsec.uspto.gov/ts/cd/casedoc/sn85594830/DRW20120414073731/1/webcontent?scale=1

In a recent case before the U.S. Trademark Trial and Appeal Board, the TTAB provided useful guidance regarding the burden of proof that parties must meet in trademark opposition proceedings.

In Brick Bodies Fitness Services, Inc v. BRIK Fitness Solutions LLC, the Board held that the mark BRIK FITNESS and Design was likely to cause confusion with Opposer’s mark, Brick Bodies based on the similarity between the parties’ marks and respective health and fitness services.  In so ruling, the Board raised the following observations that touch upon several related issues that litigants face in trademark opposition proceedings:

  1.  Assertion of a “family” of marks.   Here, the Opposer Brick Bodies sought to assert rights in and to four separate trademarks – namely, Brick Bodies, Lynne Brick’s, Build Your Body with Brick, and Brick Bodies Extreme, claiming that collectively they constituted a family of “BRICK” marks that were entitled to greater protection.  The Board opined that the mere use of a common term in multiple trademarks owned by the same party does not a “family” make for purposes of trademark rights.  Instead, other factors must be examined, including the public’s recognition of the marks as emanating from the same source, as supported by website visitors or other consumer perception factors.
  2.   Strength/Weakness of marks.  Applicant claimed that the Opposer’s “brick” marks were weak, since the “brick” derivative of Opposer’s marks were derived from a combination of the surnames of the founders of the company.  The Board rejected this argument, stating that the term “brick” is commonly perceived to relate to a hardened clay block, and not primarily merely a surname.
  3.   Third-party trademark uses.   Applicant submitted into the record evidence of numerous third-party listings for fitness facilities that use the term “brick” as part of their name from several locations throughout the United States.  Surprisingly, and without explanation, the Board reasoned that although use of similar marks on similar goods by third-parties is relevant to show that a mark is weak and entitled to a narrow scope of protection, the Applicant failed to show the extent of such third-party uses.  Therefore, the Board summarily concluded that the uses provided by Applicant were limited in geographic scope and not probative to show that consumers would be aware of such third-party uses.

In the end, the Board relied on the standard likelihood of confusion analysis based on the similarity of sight, sound, and meaning of the parties’ respective BRICK BODIES and BRIKFITNESS marks, together with the similarity of the parties’ services, to deny registration and rule in favor of the Opposer.

The United States Patent and Trademark Office recently released its TTAB filing and performance statistics for the fiscal year 2015.

While there have not been any substantial deviations from 2014 filing statistics, the recent Supreme Court decision in B & B Hardware, Inc. v. Hargis Industries, Inc. will most likely result in an increase in the number of trademark opposition proceedings instituted in the U.S. Trademark Trial and Appeal Board.  This is due to the fact that trademark opposers may now perceive the TTAB to be a superior forum in which to contest a trademark applicant’s right to register, and ultimately use, a trademark in commerce.

Trademark Trial and Appeal Board Filings – FY 2015

The following is a breakdown of relevant TTAB filings for the fiscal year 2015, with percent changes over FY 2014 filing figures indicated in parentheses:

  • Trademark oppositions: 5,290 (-4%)
  • Trademark Cancellations:  1,763 (+2.3%)
  • Extensions of time to oppose:    17,132   (-1%)
  • Appeals:  2,992 (+7%)

As one can see, with the exception of the number of appeals filed, there has been little change in year over-year filing volume between FY 2015 and FY 2014.  The number of trials for the year was 123 compared to 132 in FY 2014.

Of particular note is the low number of cases decided under the TTAB’s accelerated case resolution program (ACR).  Once touted as a less costly and more streamlined alternative to traditional proceedings, there were only 10 cases decided under ACR procedures in FY 2015. Even more surprising in the negligible difference between the pendency of normal cases vs. ACR proceedings, with the average total pendency of trial cases being 161.2 weeks versus 138.6 weeks for ACR cases.

The volume of trademark opposition case filings will be watched closely in FY 2016 to see if predictions come true as to whether there will be an increase in notice of trademark oppositions filed by brand owners seeking to take advantage of the strategic ramifications of the B & B Hardware decision.

In a decision with wide-ranging implications to trademark owners everywhere, the U.S. Supreme Court has just ruled that in certain cases, brand owners may be precluded from bringing claims or defenses based on trademark infringement in U.S. District Court if the issue of likelihood of confusion was previously adjudicated in a trademark opposition proceeding before the U.S. Trademark Trial and Appeal Board.

In the case, B & B Hardware Inc. v. Hargis Industries, Inc., Hargis sought to register its trademark SEALTITE with the U.S. Patent and Trademark Office.  B&B Hardware opposed the trademark application on the grounds that it was confusingly similar to its own SEALTIGHT trademark.  The Trademark Trial and Appeal Board (TTAB) ruled in favor of B & B Hardware, thereby refusing Hargis’s right to register its mark. However, since the TTAB’s jurisdiction is limited to precluding a party from registering a trademark, not using a trademark in commerce, B&B subsequently filed a complaint for trademark infringement in U.S. District Court.

In the District Court case, B&B argued that Hargis was precluded from contesting the TTAB’s earlier finding of a likelihood of confusion.  The District Court disagreed with B&B’s position, and the Eighth Circuit affirmed the district court’s decision, stating that issue preclusion was improper as the TTAB and district court used different standards to determine a likelihood of confusion.  The Supreme Court in reversing the Eighth Circuit, held that when the uses adjudicated by the TTAB are “materially the same” as the district court, then issue preclusion may apply.

What the Supreme Court holding may mean for trademark owners

  • Trademark Oppositions may now carry greater weight.  Until now, even if a trademark opposer prevailed in a trademark opposition, it would not prevent a trademark applicant from arguing against likelihood of confusion in a district court proceeding for trademark infringement.  Now, the Supreme Court ruling may have the effect of having a TTAB’s refusal of registration of a trademark due to likelihood of confusion carry over to a district court’s finding.  What does this mean to a trademark applicant?  In all likelihood, the trademark applicant will find that not only will they be not able to register the trademark at issue, but also may be ordered to cease marketplace use in a subsequent district court proceeding.
  • Filing a Trademark Opposition may create greater leverage.  Numerous trademark oppositions have historically resulted in an amicable settlement wherein the applicant agrees to withdraw its trademark application in consideration of the opposer not contesting the applicant’s continued right to continue to use its trademark in commerce.  With the Supreme Court’s ruling, companies that oppose another ‘s trademark in the TTAB and prevail on grounds of likelihood of confusion have a much greater chance of summarily running the table in a district court proceeding to enjoin the applicant’s marketplace use of the trademark.  The predicted result? Trademark opposers will have less of an incentive to amicably settle a trademark opposition and trademark applicants may have greater risk of losing the right to use their brand name in commerce.

Now, more than ever, trademark owners who believe that another party is infringing its trademark rights should consider commencing a trademark opposition proceeding by filing a notice of opposition with the U.S. Trademark Trial and Appeal Board.