COLLEN - The U.S. Trademark Opposition Law Firm.  Collen has substantial experience in representing global companies in trademark opposition proceedings before the U.S. Trademark Trial and Appeal Board.   To speak with our attorneys about your matter, please contact James Hastings at (914) 941-5668 or email: jhastings@collenip.com

Trademark opposition filings increased in 2016, according to a recent report released by the United States Patent and Trademark Office.  A summary of comparative 2015 findings can be found in our publication here.

Highlights of the report include the following performance statistics for 2016 U.S. Trademark Trial and Appeal Board activities:

  • Trademark 0pposition filings totaled 5,881 compared to 5,290 in 2015
  • Trademark cancellation filings totaled 1,848 compared to 1,763 in 2015
  • Trademark appeals filings totaled 3,121 compared to 2,992 in 2015

For the same period, the TTAB issued 35 precedential decisions, which was within its target range of 35-40 per year.   The average pendency of precedential decisions was 32.5 weeks for final decisions, compared to 48.1 weeks for the previous annual time frame.  The average time of interlocutory orders was also reduced, going from 45 weeks in 2015 to only 25 weeks in 2016.    The length of inter partes cases, however, has not changed substantially, with the average of decided trademark opposition and trademark cancellation cases being 154.3 weeks from commencement to conclusion in 2016, compared to 161.2 weeks in 2015.

Trademark opposition considerations.    When contemplating commencing a trademark opposition, it is best to keep in mind the following:

  1.  Estimated duration.    Most trademark opposition cases settle before the trial phase, which means that statistically, the probability that it will go all the way to judgment is unlikely.   That being said, a company should be prepared for all contingencies.  This means taking into account factors that could either exacerbate or shorten the litigation process.
  2.   Early case assessment.   An early case assessment and plan of action is an integral part of a proactive trademark opposition litigation strategy.
  3.   Accelerated case resolution.    The U.S. Trademark Trial and Appeal Board has an accelerated case resolution (ACR) program that when used properly, can shorten the duration of a proceeding.   Details will be discussed in later posts.

To learn more about U.S. trademark oppositions or to discuss your company’s case, contact James Hastings at Collen.

Trademark opposition proceedings are contested matters before the U.S. Trademark Trial and Appeal Board (TTAB).  The complaint, known as a Notice of Opposition, is filed by the Opposer, who may allege several grounds for refusal of a trademark application.   Once the Notice of Opposition has been served upon the Defendant, the TTAB will issue an Order setting forth the relevant dates for each successive phase of the proceeding.  This includes the time to file an Answer, the initial conference, initial disclosures, discovery, and trial dates.  The failure to comply with the case management dates could irreversibly jeopardize a party’s rights.

Here are three considerations when preparing and filing an Answer to a Notice of Opposition:

Step #1.   Consider the rules.   Trademark opposition guidelines may be found in the Trademark Board Manual of Procedure.   The Manual sets forth the various statutes, rules, and case precedent applicable to trademark oppositions.  This includes all requirements and deadlines that must be adhered to in an inter partes proceedings before the Board.  Practitioners should refer to it often, as it provides a solid foundation to ensuring that the case stays on track.

Step #2.  Review the Complaint.   The Notice of Opposition must contain (1) a short and plain statement of the reason why opposer believes it would be damaged by the registration of the opposed mark (i.e., opposer’s standing to maintain the proceeding); and (2) the grounds for the opposition.   Standing generally requires that the Opposer have a real interest in the outcome of the proceeding and that the allegations of damages have a reasonable basis in fact.  An Opposer may raise any available statutory ground for opposition that negates the defendant’s right to registration, including likelihood of confusion, mere descriptiveness, or that the Applicant lacked a bona fide intention to use the mark at the time of fling.

Step #3.   Draft the Answer.    The requirements for a properly drafted Answer may be found in TBMP Section 311.   While there is no standard format for an Answer, it is generally best to answer each numbered paragraph of the complaint by providing a short statement either admitting or denying the alleged facts.  If you cannot do so, then state that you have insufficient facts to either admit or deny the claims.  The Answer is not the place to respond to the merits of the Notice of Opposition.  In conjunction with the Answer, a list of  possible affirmative defenses and potential counterclaims should also be considered.

As a defendant in a trademark opposition proceeding, it is important to have a well-crafted answer, affirmative defenses, and counterclaims, where appropriate.  Depending on the facts of the case and relative strengths of the parties’ positions, doing so could provide needed leverage at the discovery conference and later settlement discussions.

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When your company is faced with a trademark opposition,  there are many misconceptions of what it is and what it is not.  Be sure to have a clear understanding of what to expect to help guide your decision making process.

Governing Rules.  Trademark oppositions in the United States are heard before the U.S. Trademark Trial and Appeal Board (TTAB).    Proceedings before the Board are governed by various federal statutes and administrative rules, including the Lanham Act, Trademark Rules of Practice, as well as the Federal Rules of Civil Procedure.   How the Board may rule in a particular case is largely influenced by  decisions in prior cases.  These include the holdings of the TTAB as well as the decisions of the Court of Appeals for the Federal Circuit.  Litigants should consult the Trademark Board Manual Procedure for all rules applicable to proceedings before the Board.

Phases of Litigation.   As a contested civil litigation between two parties, a trademark opposition consists of several distinct phases.   These include pleadings, discovery, and trial.   Each one is briefly summarized below:

  1.   Pleadings.   The complaint is known as a Notice of Opposition (“Notice”).   Any party that believes that it will be damaged by the registration of another party’s trademark may file an opposition during the proscribed period for doing so.  The Notice of Opposition should include a short and plain statement of the claim showing that the Opposer is entitled to relief and the demand for the relief sought.  The most common grounds for a Notice of Opposition are likelihood of confusion, descriptiveness, and lack of a bona fide intention to use the mark in commerce at the time of filing.   An Answer to the Notice must be filed after 30 days of service, and may include affirmative defenses and counterclaims if applicable.
  2.  Discovery.   The discovery phase is often the most lengthy and protracted phase of litigation.  Discovery may include interrogatories, requests for production of documents, requests for admissions, and depositions.  The purpose of discovery is to gather relevant information and documents that tend to support one’s own case, or alternatively, discredit the legal position of one’s adversary.   The discovery period is set by the Board, and each party has 180 days to conduct relevant discovery.
  3.  Trial.   Commencing 60 days after the close of discovery, the trial period begins with the Opposer’s 30 day testimony period, followed by the Applicant’s 30 day testimony period, and the Opposer’s 15 day rebuttal.  Interestingly, a trial before the TTAB is unlike other civil proceedings, in that the “trial” is all on the papers — there is no live trial before judges.  Instead, the parties submit their evidence in the form of notices of reliance and trial briefs to establish the facts and legal support necessary to prevail.   Notices of Reliance generally reference to documents, deposition testimony, and other information gathered in the discovery process, and in certain situations, during the trial phase of the case.

How to Get Started.    In evaluating a U.S. trademark opposition, it is important to have knowledge of your own case, as well as that of your adversary.   Therefore, it is best to first conduct a search of the other party’s trademarks and common law uses that may be available on the internet or other publicly available sources.  Once this is done, it is best to discuss the matter with a qualified trademark opposition attorney who will be able to discuss with you how such proceedings work, the potential attorney’s fees involved, as well as your options moving forward.

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.

 

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. 

 

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.

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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.