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.

Why work with us?  Here are a few reasons:

  • Our attorneys have represented clients in several hundred U.S. trademark opposition proceedings
  • Our client list includes well-known international brands
  • We offer reasonable hourly rates and/or fixed-fee options for each phase of the proceeding
  • We are leaders in the U.S trademark industry, and our professionals have served on the Executive Committee of the International Trademark Association and the INTA Trademark Mediators Network

Here are some of the clients who have retained our services:

  • Multinational consumer brand companies
  • U.S. consumer product and service companies
  • U.S. Healthcare System and wellness companies
  • Small business owners and start-ups
  • Non-profit associations
  • Multichannel retailers

Attorneys and law firms also seek out our services to represent their own clients or provide guidance and subject matter expertise.

To speak with our attorneys about your matter, please contact James Hastings at (914) 941-5668 or email: jhastings@collenip.com

Many trademark attorneys believe that the goal of a TTAB discovery conference is to zealously prepare for litigation.  A better approach is to view it through the lens of a favorable settlement outcome.  Since over 90% of trademark oppositions settle prior to trial, it makes sense to do so.

According to U.S. Trademark Trial and Appeal Board rules, the parties are required to engage in a mandatory discovery conference.   This conference usually must take place within thirty days after the Answer has been filed.  As part of the conference, the parties will be required to discuss (1) the nature of and basis for their respective claims and defenses, (2) the possibility of settling the case or at least narrowing the scope of claims or defenses, and (3) arrangements relating to disclosures, discovery and introduction of evidence at trial.

Here are a few recommendations for making the most of a TTAB discovery conference:

  1.   Encourage open communications.    Far too often, attorneys are quite terse during the discovery conference.  Engaging in a five minute discovery conference does not serve the client’s interests.  Instead, discuss the merits of the case openly and candidly with opposing counsel.  It is  not a sign of weakness.
  2.   Be respectful.    Have the other party articulate its interests in defending or opposing a trademark application.  This will provide a useful foundation for further discussions.  It will also set the tone for mutual cooperation that is mandated, but not always followed, by trademark practitioners before the Board.
  3.   Prepare for settlement.   Discuss with your client all settlement options available to it prior to the conference.   These may include that the applicant withdraw its application, narrow its identification of goods, or assign the mark to your client with a license back for limited purposes.

The number one goal of a TTAB discovery conference should be to position your client for a successful case outcome.  This should be done without needlessly escalating risk and costs.  Practitioners should do their best to keep tensions low and cooperation high to better serve their clients.

Food for thought.  A trademark cancellation may result from abandonment of a trademark.

In Local Foods LLC v. Foodsmith Bowen Osborn, the Petitioner sought cancellation of Registrant’s FOODSMITH and Design trademark for “health food, namely freshly prepared meals consisting primarily of local and organic meat, fish poultry, vegetables, properly proportioned, for delivery and pickup” in International Class 29 .  For purposes of trademark abandonment, a trademark registration is subject to cancellation if it has not been used for at least three consecutive years.  The objective evidence must also infer that the Registrant had no intention to resume use of the mark.

Rather than waiting for a trial on the merits, the Petitioner elected to file a motion for summary judgment seeking a ruling that Registrant had abandoned its Foodsmith mark.  Summary judgment is an acceptable method to dispose of a case where there are no genuine issues of material fact.  To prevail, the moving party has to show that a particular fact is not in dispute.  This may be established by citing to specific materials that have been made of record, including discovery responses and affidavits.  Once the moving party submits sufficient evidence to meet its proof, then the burden shifts to the non-moving party to demonstrate the existence of material facts for trial.

Here, Petitioner was able to show, via requests for admission, that the Registrant had not used its Foodsmith mark for at least three consecutive years.   The registrant failed to submit any evidence that the mark was still in use by a former partnership via implied license or that he intended to resume use of the mark.  He also admitted in answers to interrogatories that he had not yet used the mark himself.  Based on the cumulative evidence, the Trademark Board granted Petitioner’s motion and the FOODSMITH Mark was cancelled.

Practitioner’s Note:  In seeking a trademark cancellation, the moving party should be sure to plead the proper statutory grounds.  A petition for cancellation on grounds of abandonment is fairly straightforward.  Either there are facts to establish that the registrant has failed to use its mark for three consecutive years or not.   If you are in the position of a defendant/registrant, it is best to speak with a qualified trademark cancellation attorney.

Trademark opposition costs in the United States are some of the highest in the world.   Estimates for a full trial on the merits before the U.S. Trademark Trial and Appeal Board can exceed $100,000 or more compared to half the cost in other countries.  It’s no wonder why inhouse trademark counsel are increasingly seeking ways to more effectively manage their budgets.

Here are a few strategies to do so:

  1.   Begin with case outcome mapping.  The first pre-filing step in a trademark opposition should be to fully list all potential outcomes to the case – favorable or unfavorable.  Anything from a negotiated settlement, license, amendment of goods, to a judgment on the merits should be listed.  At this early stage of litigation budgeting, it is important for inhouse trademark counsel to understand options available to any litigant in a TTAB proceeding.  With this knowledge, a case-specific review can take place with greater accuracy.
  2.   Engage in Early-Case Assessment.   Discovery is often the most expensive stage of an opposition proceeding.  Unofficial estimates are that it accounts for at least 50% of total attorney’s fees.   Therefore, an assessment of potential strengths and weaknesses of a case should coincide with case outcome mapping.  Too often, Opposer’s find themselves going down the slippery slope of a full-blown litigation.  This can lead to a higher risk profile that was neither intended nor expected.
  3.   Consider trademark mediation.   Reaching out to opposing trademark counsel to explore the option of mediation is not a sign of weakness.   Since over 90% of cases settle before a full trial on the merits, it makes good economic sense to do so.   INTA’s Trademark Mediators Network consists of over 2oo trademark mediators qualified to assist litigants.   The parties can agree for the mediation to be non-binding, leading to no commitments other than to sit down and talk [disclosure: the author of this blog is an INTA approved mediator].
  4.   Partner with the right outside counsel.   The ability to achieve a favorable resolution can rest on the quality of outside trademark counsel.  Being highly skilled in U.S. Trademark Trial and Appeal Board practice is expected.  Great trademark counsel, however, are the ones that can establish a respectful working relationship with opposing counsel.  It is a known fact that hyper-aggressive attorneys often needlessly increase the cost of trademark litigation. 

Inhouse trademark counsel should always be thinking of objective and measurable means to mitigate the risks of an opposition proceeding.   By doing so, their internal stakeholders and brand protection goals will continue to be served well.

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.