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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.

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.

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.

Each year, companies spend millions of dollars to protect their valuable brand names from competitors.  While a majority of such enforcement efforts take place online and in federal courts, one of the most effective tools for trademark enforcement resides within the confines of the U.S. Patent and Trademark Office: the trademark opposition.

Trademark Opposition Basics

A trademark opposition is a proceeding in which a party seeks to prevent another party from registering a trademark that is pending before the USPTO.  Every year more than 16,000 requests for an extension of time to file a trademark opposition are submitted to the Trademark Office and over 5,000 trademark opposition proceedings are commenced.  The procedures for trademark opposition cases may be found in the Trademark Board Manual of Procedure, a voluminous work that contains rules, regulations, and processes that must be strictly followed by all litigants and attorneys involved in a trademark opposition proceeding.

1.  The Notice of Opposition.  A trademark opposition proceeding is instituted by filing a complaint with the U.S. Trademark Trial and Appeal Board, the trademark adjudicative body of the United States Patent and Trademark Office.  The complaint, known as a Notice of Opposition, sets forth the grounds for the opposition, which a minimum, should include (a) the name of the opposer; (2) a description of the nature of its trademark rights; and (3) how it will be damaged should the application that is being opposed be granted.

2.   The Answer.  After the notice of opposition (i.e., complaint) is filed, the applicant has 40 days in which to answer, move, or otherwise plead to the allegations contained in the notice.  In addition to answering the allegations of the complaint, the applicant can also invoke affirmative defenses as to why the notice of opposition should be defeated.

3.  Mandatory Discovery Conference.  In an effort to narrow the issues and promote the possibility of early resolution of the dispute, the Trademark Trial and Appeal Board requires the parties to have a mandatory discovery conference prior to the commencement of discovery.  The conference, which may take place by phone, should include a brief discussion of the parties claims and defenses, as well as potential settlement proposals.  Should the parties believe that a settlement proposal is promising, they may jointly agree to seek a suspension of the case for a brief period (usually 60 days) to determine whether a final settlement can be achieved without the need to escalate the litigation and associated legal costs.

4.  Discovery.  The discovery phase of the case involves comprehensive fact finding in an effort to support the legal burdens of the respective parties. Forms of discovery may include interrogatories, requests for production of documents, and requests for admissions. Depositions of key witnesses and parties are another form of discovery that are routinely utilized by litigants.

5.   Trial Phase.  Unlike litigation in federal and state courts where trial testimony is done in the courtroom, trademark oppositions are taken on the papers and all filings are submitted through paper or electronic means.  The merits of the case are adjudicated by Trademark Administrative Judges of the Trademark Trial and Appeal Board, who are empowered to hear such cases, including the nature and quality of the evidence and legal arguments, as well as render a final written decision on the case.

Trademark oppositions are complex legal proceedings that often require the skills of trademark attorneys that are experienced in this form of specialized litigation before the United States Patent and Trademark Office.  If a Notice of Opposition has been filed against your company’s trademark application, it is always advisable to contact a trademark opposition attorney to discuss your options.

Each year, thousands of companies seek to register their trademarks with the United States Patent and Trademark Office.  But there is an interesting fact that nationally-advertised trademark registration services do not publish: over 33% of trademark applications get refused by the U.S. Trademark Office.

That’s right: obtaining a trademark registration is more complicated than LegalZoom would like you to believe.

Even after the U.S. Patent and Trademark Office has preliminarily approved a trademark application, any company or individual who believes that it may be injured by the registration has the right to object to the trademark application. This is done by preparing and filing a Notice of Opposition with the U.S. Trademark Trial and Appeal Board.

Continue Reading Receive a Notice Of Opposition? You’re not Alone.