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.

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 is a lesson in what happens when there is a crowded field of similar trademarks.

In Inter-Industry Conference on Auto Collision Repair v. LM Industries Group, Inc., Applicant sought registration of the mark ICAR or land vehicles in International Class 12.  Opposer filed a notice of opposition against the ICAR application on the basis that it was likely to cause confusion and dilute Opposer’s rights in its eight registered marks incorporating the term I-CAR.   Opposer’s marks are in the field of auto body repair and damages analysis.  In its analysis of whether a likelihood of confusion existed between the parties’ marks, the TTAB compared Opposer’s Reg. No. 1607727 of I-CAR for “educational services consisting of conducting training course in auto body repair and damages analysis,” in Class 41 with Applicant’s mark in Class 12.  The Board chose this specific registration as it was the closest to the goods offered by Applicant for the same or similar auto body repair and damages field.

In its opinion, the Board recognized in that analyzing the relevant likelihood of confusion factors, two key considerations are the similarity of the marks and the similarity of the goods or services.  Yet at the end of the day, the number of third-party registrations of ICAR and its derivatives proved conclusive.

In ruling against the Opposer, the Board reasoned that:

Despite the similarities of the marks and the niche fame of Opposer’s mark, we find that the number of third-party users for automobile related services, the differences between the goods and services, channels of trade, and classes of consumers, as well as the heightened degree of sophistication and care in the decision-making process in purchasing Opposer’s educational services and Applicant’s automotive goods, warrant a finding that there is no likelihood of confusion.

Editor’s Note:   The Board’s finding that no likelihood of confusion existed between the parties’ marks was despite the fact that it concluded that Opposer’s mark was strong and had achieved fame in the field of automobile collision repair.  However, since ICAR derivatives had been registered and used by numerous other third-parties for other facets of automobile goods and services, it concluded that Opposer was entitled to a restricted scope of protection outside the automobile collision repair category.

The U.S. Trademark Trial and Appeal Board recently found no likelihood of confusion between two apparel marks.

In Manhattan International Trade, Inc. and Pure & Simple Concepts, Inc. v. Industrie IP Party, Limited, the Applicant sought to register the design mark FINEST QUALITY GARMENT MAKERS INDUSTRIE TURN OF THE CENTURY CLOTHING EST 1999 for clothing.   Upon viewing the logo, the largest portion of the mark is “Garment Makers Industrie.”  In its notice of opposition, Opposer alleged prior use and registration of a family of “INDUSTRY” marks for clothing, including INDUSTRY BY WORKWEAR, INDUSTRY UNION MADE PRODUCT, INDUSTRY GIRL, and additional marks for INDUSTRY with various design elements.  As in all trademark opposition cases involving likelihood of confusion, Opposer bore the burden of proof.

In analyzing the likelihood of confusion factors, the Board determined that the goods were, in part, identical.  Therefore, it also led to a presumption that the clothing products bearing the parties’ respective marks traveled in the same channels of trade.  The Board went on to state “the legal identity of the goods, close relationship of the goods and services, and their overlapping channels of trade and classes of purchasers not only weigh heavily in favor of finding a likelihood of confusion, but also reduce the degree of similarity between the marks necessary to find a likelihood of confusion.”  That being said, the Board concluded that in considering the parties’ marks in the entirety as to appearance, sound, connotation, and commercial impression, the “many differences between the marks outweigh their similarity.”

Moreover, the Board found that the Opposer’s INDUSTRY mark was weak, reasoning that:

the weaker an opposer’s mark, the closer an applicant’s mark can come without causing a likelihood of confusion and thereby invading what amounts to its comparatively narrower range of protection.

Based on the vast differences in the parties’ marks in their entireties, the weakness of the term “INDUSTRY” for clothing, and numerous references to third-party registrations containing the word “industry” in the record, the Board dismissed the opposition.

Practitioner’s Note:    The Board also ruled that the Opposer did not establish that it had a “family” of marks, as Opposer’s evidence as to consumer recognition and other factors necessary to establish a family of marks was weak.

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.

 

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.

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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.

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.