Before filing a trademark opposition, be sure to assess whether you will be likely to prevail. By doing so, you can potentially save thousands of dollars in attorney’s fees and avoid subjecting your brand to unnecessary risks.

The determination of whether to file a trademark opposition to contest a third-party’s trademark application is not always simple. Before filing a notice of opposition, the potential Opposer should take into account the following considerations:

Causes of Action.  Under the Trademark Act, there are numerous grounds under which to bring an opposition.  Some of the more common grounds include that:

(a) the mark, when used in connection with Applicant’s applied for goods or services, is likely to cause confusion with Opposer’s previously used or registered mark;

(b)  the Applicant did not have a bona fide intent to use its mark in commerce at the time of filing

(c)  Applicant’s mark is merely descriptive of its goods or services

(d)  there was no bona fide use in commerce of Applicant’s mark prior to its filing a use-based registration

Merely pleading the grounds for opposition is not enough; the Opposer must prove the elements of its claims by a preponderance of the evidence.

Proof.   Every opposer must establish procedural and substantive proofs in order to prevail.

(a)  Standing.   An Opposer must first establish its standing to bring and maintain a trademark opposition before the Trademark Trial and Appeal Board.  Standing is satisfied when the Opposer shows that it has a legitimate interest in the outcome of the proceeding (i.e., it is not a mere intermeddler) and that it will be damaged should the registration issue.  If the Opposer cannot establish its standing, then the action will be dismissed and the substantive grounds for the opposition will not be considered.

(b)  Priority.   In cases where a likelihood of confusion is alleged pursuant to Section 2(d) of the Trademark Act, the Opposer must establish that it has priority trademark rights that are superior to Applicant’s constructive or actual first use dates.  Priority rights may be shown through a prior registration, earlier trademark use, or use analogous to trademark use.

(c)  Substantive considerations.  Once an Opposer meets its procedural threshold requirement of standing, the elements of proving its case differ depending on the specific grounds of the Opposition.  To establish a Section 2(d) case for likelihood of confusion, the Board undertakes the 13-part test found in the case In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).   A discussion of this test may be found here.  With regard to establishing that Applicant’s mark is merely descriptive pursuant to Section 2(e) of the Act, the Opposer must show that the mark merely describes a feature, characteristic, ingredient, purpose, or function, or use for the applied for goods.   A discussion of the test for mere descriptiveness may be found here.

Practice Tip:  Companies and in-house counsel who are considering filing a notice of opposition can discuss the implications of doing so with the author.  In addition to filing a notice of opposition, there are other alternatives that can be discussed depending on the business goals of the client.  Being fully apprised of these options will serve the interests of the brand owner client.

In a trademark opposition proceeding, a party alleging a likelihood of confusion pursuant to Section 2(d) of the Trademark Act is required to establish specific elements of proof.  If you are a potential opposer, you will have the burden of proving the following evidentiary factors by a preponderance of the evidence:

Standing.  Standing is a threshold issue that must be determined in every trademark opposition or trademark cancellation before the U.S. Trademark Trial and Appeal Board.   In order to establish standing, the Opposer must show that it has a legitimate interest in the outcome of the proceeding and that it will be damaged should the defendant’s application issue.  In a likelihood of confusion case,  the Opposer’s standing can be established by introduction into evidence of a preexisting registration that it owns, its later-filed application that was refused based on the Applicant’s mark, or common law use that predates Applicant’s constructive date of first use.

Priority.   In Section 2(d) cases, the Opposer has the burden to prove priority of use as well as likelihood of confusion by a preponderance of the evidence.  A party may establish its own priority rights through ownership of a preexisting registration, through actual use, or through use analogous to trademark use.   Of the three, the least burdensome method is to show ownership of a prior registration.

Likelihood of Confusion.  Once the Opposer introduces evidence of its standing and priority, it must show that Applicant’s mark is likely to be confused with the Opposer’s pleaded marks.  The analysis of whether a likelihood of confusion exists has been enunciated in the 13 part test found in the case seminal case  In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) (the “DuPont Factors”).   In its many decisions that have applied the Dupont Factors test, the Board has held that some of the main factors are the similarity of the parties’ marks, similarity of the goods or services, and similarity of the trade channels.  Other important factors are the strength of the Opposer’s mark and the number of  similar third-party registrations that already exist on the register.

Practice Tips:  In evaluating the likelihood of success of a trademark opposition proceeding brought pursuant to Section 2(d), it is important for the potential Opposer to first assess its standing and priority.  If the Opposer’s priority cannot be established, then the the Board will deny the Opposition.  This means that the issue of likelihood of confusion is moot and will not be considered.  By fully vetting the likelihood of success of an opposition prior to filing it, the Opposer may save thousands in litigation fees and not subject its valuable trademark registrations to undue risk.  For further information on establishing evidence to support a Section 2(d) case, you may refer to our earlier post on the subject.

To discuss a trademark opposition or trademark cancellation case on the grounds of likelihood of confusion, please contact the author.

The Trademark Trial and Appeal Board recently released its TTAB filing statistics for fiscal year 2018.   These updated figures include year-to-year changes in the filing of appeals, notices of oppositions, and petitions for cancellations.  It also provides useful information on the disposition of cases.

Highlights include the following:  (percentage in parentheses signifies change over 2017)

I.   Filings

  • Appeals: 3,223; (+2%)
  • Extensions of time to oppose: 19,208;  (+3.9%)
  • Oppositions: 6,496 (+5.5%)
  • Cancellations: 2,253 (+7.2%)

II.   Contested Motions

  • # of decisions issued:  1,082  (+9.2%)
  • # of motions resolved by decision: 1318  (+6.5%)
  • Average pendency:  9.4 weeks  (+20.5%)
  • # of cases with motions awaiting decision:  165 (+12.2%)

III.    Trial Cases and Appeals Pendency

  • Appeals:  35.8 weeks (-7.8%)
  • Trial Cases: 140.3 weeks (-10.8%)
  • ACR Trial Cases:  106.3 weeks (-11%)
  • # of ACR Cases decided:  19 cases
  • Awaiting decision at end of period:  130 cases (+39.8%)

Conclusions

These most recent TTAB statistics yield some interesting observations:

  1.   TTAB litigation is increasing.   Opposition and cancellation proceedings are up on average approximately 6% combined.  This could be due in part to greater brand enforcement efforts being undertaken as a result of a stronger economy.  With regard to cancellations, the USPTO has made it quite clear that “deadwood” registrations that contain goods or services that are no longer used are subject to cancellation either in whole, or in part.  Therefore, the increase in both opposition and cancellation filings could be for offensive as well as defensive purposes.
  2.  There is increased motion practice.   Although both the Board and the Federal Rules encourage the just and speedy resolution of contested proceedings, and for both parties to cooperate fully, this sadly is not always the case.  While it cannot be proven, the failure to cooperate often results in protracted proceedings, including greater motion practice and higher attorney’s fees.
  3.  TTAB is focused on speedier resolution of cases.   The TTAB has made a commitment to several things that will help shorten the inter-partes cases lifecycle, including encouraging the parties to stipulate to Accelerated Case Resolution (ACR) procedures, engage in mandatory discovery conferences where settlement options are explored, and further mandate the cooperation between counsel.

Editor’s Note:   Parties are encouraged to protect their trademark rights at all times.   This is best done through proper monitoring and enforcement.  Should a trademark opposition or trademark cancellation proceeding be necessary to enforce a brand owner’s rights, it is recommended to speak with a qualified trademark attorney experienced in TTAB proceedings.

 

A trademark opposition may be commenced based on a likelihood of confusion with a prior registered mark.   The statutory basis for a likelihood confusion cause of action may be found in Section 2(d) of the Trademark Act.

To prevail on a Section 2(d) claim, the Opposer must prove by a preponderance of the evidence the following:

Standing.  Standing to bring or maintain an action consists of two elements.  First is that the Opposer has a legitimate stake in the outcome of the proceeding.  In other words, that it is not a mere intermeddler.  Second is that the Opposer must allege that it will be damaged if the application for registration issues.  Proof of a prior existing trademark registration is a common method for an Opposer to prove its standing.  Since standing is a low threshold, it is often met.  However, Opposers must be careful to include proof of its standing in its Notice of Opposition.  The failure to do so may result in dismissal of the proceeding.

Priority.   In a likelihood of confusion case, the Opposer must also establish that it has priority.  This means that it has superior trademark rights to that of the Applicant.  This can be proven by either asserting a prior trademark registration, prior common law use, or use analogous to trademark use.  In any of the above examples, the Opposer must show that its use predates the Applicant’s filing date (in the case of an intent to use application) or use dates based on a use-based application.

Likelihood of Confusion.   Assuming the Opposer can prove standing and priority, it then must show that Applicant’s mark is likely to cause confusion with the Opposer’s prior rights.  To do so, the Trademark Trial and Appeal Board looks to a 13-part test set forth in the seminal case  In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) (the “DuPont Factors”).   Although the weight given to the relevant DuPont factors may vary, the following two factors are key considerations in any likelihood of confusion analysis:

  • The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
  • The relatedness of the goods or services as described in the application and registration(s).

In addition to the above-factors, the Board also looks to the following key factors in making its determination:

  • Similarity of the parties’ trade channels
  • The conditions under which sales are made to buyers (impulse or sophisticated purchasing decision)
  • The number and nature of similar marks on similar good
  • Evidence of actual confusion

Each likelihood of confusion case is different as applied to the relevant Dupont Factors.  Therefore, it is important for an Opposer to thoroughly analyze the relevant legal standard and factual support for your case prior to bringing a trademark opposition proceeding.

Editor’s note:  If your trademark opposition is opposed based on a likelihood of confusion, it is advisable to speak with a qualified trademark opposition attorney.  Likewise, if you wish to oppose a third-party trademark application on the grounds that it is likely to cause confusion with your company’s prior trademark, it is best to review the guidelines contained in this article.  To discuss your case or for further information, feel free to contact the editor.

A trademark opposition may be filed based on one of several grounds.   This includes that the mark is merely descriptive and should be refused registration pursuant to Section 2(e)(1) of the Trademark Act.

A trademark is assessed on a continuum of legal strength.  The strongest trademarks (and thus most eligible for trademark protection) are arbitrary or fanciful.  This is usually a coined-term that has no relation to the goods or services.  Suggestive trademarks are next; like arbitrary marks, suggestive trademarks are considered to be distinctive and therefore registrable.  Suggestive trademarks generally require some imagination on behalf of the consumers in discerning the goods or services for which the mark is applied.  In contrast to arbitrary and suggestive trademarks are merely descriptive trademarks.  Lastly, are generic trademarks, which can never be registered under any circumstances.

Merely Descriptive Trademarks.  A mark is “merely descriptive” within the meaning of § 2(e)(1) if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods and/or services. TMEP §1209.01.  A major policy reason for not granting protection to merely descriptive trademarks is to prevent any one party by having a monopoly right to a phrase or term that can be used by others.  Whether a mark is descriptive is assessed in relation to the goods or services for which it is applied.  Therefore, a mark may be merely descriptive (and thus not registrable) for use with certain goods but not for others.  For example, APPLE would be merely descriptive of pies and baked goods, but not for computers.  The former use would be unregistrable as a trademark; the latter is an arbitrary and strong mark as used by the famous company of the same name.

Design trademarks (otherwise known as logos) can also be deemed merely descriptive and therefore not registrable.  A visual representation that consists merely of an illustration of the goods, or an important feature of characteristic of the goods is merely descriptive under Section 2(e)(1).  Similarly, when a mark is comprised of wording that is descriptive under §2(e)(1) and a design element that is a pictorial representation of the goods, or that reinforces the descriptive meaning of the wording, the entire mark is merely descriptive.

How to Oppose a merely descriptive trademark.   A trademark opposition to prevent a  trademark from registering under Section 2(e)(1) can be initiated by an Opposer.  At a minimum, the Opposer must plead that it has standing to contest the trademark application and that the applied for mark is merely descriptive.  The Opposer has the burden of proving by a preponderance of the evidence that the Applicant’s mark is merely descriptive and should be refused registration.  Evidence is often established through dictionary definitions, trade usages, testimony, and other publicly available materials that would support a Section 2(e)(1) claim.  Note that an Applicant in a trademark opposition may also bring a counterclaim against an Opposer on the same grounds that are being alleged against it.

Client advisory:  If you are considering opposing a trademark application of a third-party, or you a trademark opposition has been filed against your application on the grounds of mere descriptiveness, you may contact the author to discuss options available to you.

A motion for summary judgment in a trademark opposition or trademark cancellation proceeding before the Trademark Trial and Appeal Board (TTAB) can be an effective strategy.  Summary judgment motions are often are filed near or at the end of discovery, prior to the trial phase of the case.  Sometimes, summary judgment motions are brought even earlier in the proceeding.  If the movant is successful, it can save the moving party the time and expense of a full trial on the merits.  Equally important is the possibility that it could obtain a conclusive ruling by the Board sooner — sometimes even a year or more.   This potential savings in the time and expense of litigation can be appealing.

Yet a summary judgment motion in a trademark opposition or trademark cancellation proceeding is not without risk.  Due to its high burden of proof, a summary judgment motion is granted less than 50% of the time.  This alone could be a deterrent for companies seeking such expedited relief.   That being said, the facts of each case are unique.   Therefore, the facts and law should be weighed carefully when considering filing a motion for summary judgment.

Here are some things to consider when considering the merits of a summary judgment motion:

   1.   Legal standard:  Summary judgment is appropriate where the moving party can show the absence of any genuine dispute as to any material fact, and that it entitled to judgment as a matter of law.  Fed.R.Civ.P. 56.  A party either asserting or refuting that a material fact exists must do so by citing to admissible supporting evidence that is properly made of record.

   2.  Standing.   A party’s standing to bring or maintain a trademark opposition or cancellation proceeding is a threshold issue that an opposer or petitioner must meet in every inter partes case before the Board.  The plaintiff must demonstrate that it has a real interest in the proceeding beyond that of a mere intermeddler and that it has a reasonable basis and belief that it will be damaged.

   3.  Priority.   In cases that are filed on the grounds of a likelihood of confusion pursuant to Section 2(d) of the Trademark Act and most other statutory grounds, the movant must establish that it either has a preexisiting trademark registration that it deems to be confusingly similar to the non-movant’s mark or proprietary prior common law use.

   4.  Proving the merits.   In Section 2(d) likelihood of confusion cases,  the plaintiff must establish the presence of a likelihood of confusion between the parties’ trademarks pursuant to the thirteen factors set forth in the case of In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).   Some of the primary Dupont factors include similarity of the marks, similarity of the goods or services, similarity of the trade channels, actual confusion, and the fame of the prior mark.

   5.  Opposition to Motion.  The non-moving party should file an opposition to the motion for summary judgment.  The opposition should set forth the existence of any and all genuine issues of material fact that would make granting the motion improper.   As with the moving party, the opposing party must establish the existence of genuine issues of material fact through properly admissible evidence, such as declarations, documents, admissions, interrogatory answers, and deposition testimony.

   6.  Reply Brief.   After the non-moving party files its opposition to the motion, the moving party has the opportunity to file a reply brief, refuting any factual or legal contentions that are made by the non-movant in its opposition papers.

   7.  Judgment.   After all the moving papers have been submitted, the Board will render a written opinion.  Sometimes the Board will summarily deny the motion; most often it will include a written opinion of several pages that lays out the relevant record, legal standards, burdens of proof, and its decision.  The Board, in its discretion, may grant the motion in its entirety, deny it in its entirety, or grant it in part and deny it in part.   Any claim for relief that is not granted and could be dispositive to the outcome of the case will remain for trial.

Client Advisory.   If you are considering file a motion for summary judgment or have been served with a motion for summary judgment, it is advisable to discuss all options with your attorney or seek out other qualified legal advice.

Over 5,000 U.S. trademark oppositions are filed against trademark applications every year.  Often, the opposer is a competitor of the applicant or a company that believes that it would be damaged if the U.S. trademark application were to proceed to registration.

Here are considerations to take into account when determining whether to file a U.S. trademark opposition:

1.   Jurisdiction.   The Trademark Trial and Appeal Board (“TTAB”) is the adjudicative body of the U.S. Patent and Trademark Office that is responsible for, among other things, trademark opposition and trademark cancellation disputes.  The TTAB’s jurisdiction is limited to registration rights only; it cannot enjoin a party’s use of a trademark, nor can it award attorney’s fees.   Nonetheless, it has proven to be the preferred jurisdiction for trademark registration disputes in the United States.

2.  How to Commence.   A trademark opposition is commenced by filing a Notice of Opposition.  The Notice must set forth a brief explanation of the Opposer’s standing as well as the grounds for the notice of opposition.   The Applicant then has 40 days to file an answer to the Notice, or to otherwise seek an extension or file other pleadings, such as a motion to dismiss.

3.  Grounds.   There are several grounds on which a party may bring an opposition.  These include that the applicant’s mark is:

  • likely to cause confusion with the Opposer’s prior trademark registration or common law rights
  • merely descriptive of the goods or services for which the mark is being applied
  • generic of the goods or services
  • not entitled to registration due to fraud
  • primarily merely a surname
  • geographically misdescriptive
  • applicant lacked a bona-fide intention to use the mark (in the case applications based on intent to use)

A full list of the available grounds for filing a Notice of Opposition, including opposition to an International rights application based on Section 66a of the Trademark Act, may be found here.

4.  Procedure.   U.S. trademark opposition proceedings before the TTAB are governed by relevant U.S. statutes; the Code of Federal Regulations (“CFR”); the Federal Rules of Civil Procedure (“FRCP”); and Federal Rules of Evidence (“FRE”).    A complete explanation of TTAB rules and processes may be found in the Trademark Board Manual of Procedure (“TBMP”).

5.  Process.   A trademark opposition is a civil litigation heard before the TTAB.  Like other civil matters, trademark oppositions follow three, distinct phases:  pleadings, discovery, and trial.   The discovery phase is often the longest and well as most costly.  Discovery may include written interrogatories, requests for production of documents, admissions, depositions, and various motion practice.

6.  Settlement Alternatives.  Prior to filing a U.S. trademark opposition, it is advisable to assess the full merits of your company’s potential case and what steps can be taken to achieve your brand protection goals without the need for a full trial on the merits.  Settlement discussions with the applicant are encouraged and often undertaken with varying degrees of success.  This can can occur either before filing the notice of opposition, or at any time during the trademark opposition proceeding.

Note:  The author represents global corporations in U.S. trademark oppositions and is a member of the INTA Panel of Trademark Mediators.

A recent trademark opposition decision by the U.S. Trademark Trial and Appeal Board is an example in how an Opposer should properly establish use analogous to trademark use.

In Dexas International, Ltd v. Ideavillage Products Corp., the Opposer filed an Opposition against Applicant’s Mark, SNACKEEZ DUO  for “beverage ware; household containers for foods; thermal insulated containers for food or beverages; bottles, sold empty for beverages; cups for beverages; insulating sleeve holder for beverage cups; portable beverage and food container holder” in International Class 21.  In support of its notice of opposition, Opposer relied on its priority use of its common law mark SNACK-DUO as used on food and drink containers.   Opposer grounds for the opposition was a likelihood of confusion under Section 2(d) of the Trademark Act.

To establish proof of its priority common law use, the Opposer submitted seven declarations and three deposition testimonies.   The declarants and witnesses included the President of World Pet Association that hosted a industry trade show where Opposer displayed its SNACK-DUO product; the President of ICD Publications that ran an advertisement of Opposer’s SNACK-DUO product in its September 2014 print issue; and Opposer’s Sales, Marketing, and Project Management Directors.

To prevail on the ground of likelihood of confusion under Section 2(d) of the Lanham Act, based on a previously used mark, it is the Opposer’s burden to prove both priority of use and likelihood of confusion by a preponderance of the evidence.   Here, since Opposer did not have a prior registration and did not establish first use prior to Applicant’s constructive first use date, it had to establish its priority rights based on use analogous to trademark use.  In addition, Opposer introduced evidence of a shipment of two samples of its SNACK-DUO product to a retailer that was done prior to Applicant’s constructive first use date.

What is use analogous to trademark use?  Use analogous to trademark use is invoked for the purpose of establishing priority in a 2(d) likelihood of confusion case.   The predicate for such a claim is that the relevant consuming public must associate the mark with the party invoking such analogous use.  Such proof may include prior advertising in newspapers or other consumer or trade publications; including press releases.  Here, the Opposer was able to show analogous use activities that predated Applicant’s constructive first use date through advertising in a trade show publication that reached over 25,000 recipients as well as generated pre-sales inquiries.  It also placed its SNACK-DUO product on display at the Super Zoo Trade Show, attended by over 16,000 individuals and 910 companies.  Opposer’s product won second-place for new products for dogs.

Based on a totality of the evidence, the Board found that Opposer had indeed established its priority through use analogous to trademark use and went on to find a likelihood of confusion between the parties’ marks.   The opposition was sustained in favor of the Opposer.

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A recent trademark cancellation action by Major League Baseball against an individual who had a registration for sports apparel is another victory for well-established brand names.

In Major League Baseball Properties, Inc. v. Christopher Webb, MLB petitioned to cancel U.S Reg. No.  4472701 for the mark MAJOR LEAGUE ZOMBIE HUNTER and design, for “clothing, namely, short and long sleeve t-shirts, sweatshirts, jackets, baseball hats, and beanies,” in Class 25, registered on the Supplemental Register.   The grounds were a likelihood of confusion under Section 2d of the Trademark Act, as well as dilution.  MLB also asserted that Respondent’s registration was void ab initio since Respondent never had a bona fide intent to use its mark in commerce as well as fraud on the Trademark Office.  In support of its standing and likelihood of confusion and dilution claims, MLB introduced four of its trademark registrations for MAJOR LEAGUE BASEBALL, including the MAJOR LEAGUE BASEBALL word mark, MAJOR LEAGUE BASEBALL and Design mark and two design marks of its iconic baseball player with bat and ball logo.  Three of MLB’s registrations were for apparel goods in International Class 25.

In a preliminary ruling on MLB’s motion for summary judgment on Respondent’s lack of bona fide intent to use its own mark in commerce and fraud, the TTAB granted  summary judgment on MLB’s standing and no bona fide use of Respondent’s mark on sweatshirts, jackets, baseball hats, and beanies. The TTAB denied Petitioner’s motion for summary judgment on no bona fide use of Respondent’s mark on t-shirts and fraud.

MLB claimed that its trademarks are strong, which would entitle it to a wide latitude of protection for likelihood of confusion purposes.  Based on its evidence of extensive sales, advertising, and wide spread recognition of the MLB brand, the Board agreed.  It went to to  conclude that the parties’ goods (at least some of them) were legally identical, which would presume that the channels of trade and classes of purchasers are the same.    Finally, it observed that the parties’ design marks gave a confusingly similar commercial impression. Based on a totality of the circumstances, the Board found the Respondent’s mark to be confusingly similar to MLB’s marks and accordingly ordered Respondent’s registration be cancelled.

Trademark cancellation tip for large brands  Well-established brands are often successful in trademark cancellation proceedings based on the strength of their trademarks and supporting evidence.  Therefore, it is important for brand owners to create a repository of historical sales and advertising figures, as well as marketing and advertising specimens and trade channels that shows widespread use and consumer recognition of its marks.

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Prevailing in a TTAB opposition proceeding against a food and beverage company proves to be sweet for the makers of Nutella.

In Ferrero S.p.A. v. Ruchi Soya Industries Limited,  Ferrero, who is the owner of the NUTELLA spread brand, opposed Applicant’s mark NUTRELA for a wide variety of food and beverage products in International Classes 29 and 30.  The Opposer relied on four registrations of NUTELLA and NUTELLA and Design for its well-known hazelnut spread, beverages, and an extensive list of meat and dairy products, as well as coffee, tea, and desserts and other food items.

In its likelihood of confusion analysis, the Board first considered if the marks NUTELLA and NUTRELLA and Design were similar in sight, sound, meaning, and commercial impression.  It concluded the differences between the marks to be insignificant, so this factor weighed in favor of a finding of a likelihood of confusion.  it then compared the NUTELLA mark and goods listed in Reg. No. 4192415 (which consisted of a large assortment of food and beverage products with Applicant’s goods, some of which were overlapping to Opposer’s goods.  While the analysis to determine whether a likelihood of confusion exists under Trademark Act 2(d) takes into account all the relevant facts in evidence, two of the key factors are similarity of the marks and similarity of the goods.   The TTAB first considered the fame of Opposer’s NUTELLA mark, as famous marks are afforded a broad scope of protection.  Based on Opposer’s evidence of widespread success, recognition and sales, the Board found that the NUTELLA mark is famous.

The TTAB next went on to assess the similarity of the parties’ respective goods.   Noting that several of the parties’ goods are legally identical, it indicated that it did not need to make the same determination for all other goods.  In other words, a similarity between the parties’ goods for a certain class will apply to all goods in that class. Moreover, where Applicant’s and Opposer’s goods are in-part identical, the TTAB presumes that the channels of trade and classes of purchasers for those goods are the same.   Based on a totality of the facts, the TTAB concluded that a likelihood of confusion existed and entered judgment in favor of the Opposer.

Editor’s Note:   If you are the Opposer in a TTAB Opposition proceeding, be sure that your evidentiary proof of sales, marketing, and advertising expenditures are introduced to ensure the support of your case.  To learn more about proving likelihood of confusion, please contact us.