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

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 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.

Trademark image

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.

No likelihood of confusion this time as the TTAB finds beer and wine to be unrelated goods.

In Justin Vineyards & Winery LLC v. Crooked Stave, LLC, Applicant Crooked Stave, LLC sought registration of the word mark HOP SAVANT, with “HOP” disclaimed, for “beer” in International Class 32.  Opposer Justin Vineyards and Winery opposed the application based on a likelihood of confusion with its preexisting registration of the mark SAVANT for wine in International Class 32.

The Board looked at the relevant Dupont factors for likelihood of confusion (13 in total), starting with the strength of Opposer’s mark.  It concluded that based on the record, Opposer’s SAVANT mark had both  conceptual and commercial strength.  Accordingly, it concluded that Opposer’s mark was inherently distinctive, having achieved at least some marketplace recognition during its nearly twelve years of use.  With regard to the similarity of the marks, the Board also opined that both parties’ mark included the identical “savant” component, with Applicant’s “hop” portion of its compound mark disclaimed.  Therefore, for comparison purposes, the marks were identical, making this factor weigh in Opposer’s favor.

The most interesting analysis was of the similarity of beer and wine as set forth in the parties’ respective applications.  Despite that fact that beer and wine have been held to be similar goods in numerous other cases before the TTAB and the Federal Circuit, the Board reiterated that each case must be decided on its own facts and evidence.   It also indicated that there is no per se rule regarding the similarity of alcoholic beverages.  Here, the Board concluded that Opposer did not introduce enough evidence to establish that beer and wine are sufficiently related that consumers expect them to emanate from the same source under the same mark.

The Federal Circuit has ruled that even a single Dupont factor may found to be dispositive in a likelihood of confusion analysis.  Here, the Board found that since the Opposer could not establish that the parties’ respective goods (i.e., beer and wine) were related for likelihood of confusion purposes, then the opposition should be dismissed.

Editor’s Note:  The burden of an Opposer to establish the relatedness of beer and wine in every single case (without much weight given to case precedent) is somewhat —well— burdensome.  Would it be too much to ask that the Board take notice of the relatedness or non-relatedness of certain goods as the Trademark Office routinely does during the trademark examination process?  This could be one reason why U.S. trademark opposition and cancellation proceedings are some of the most expensive in the world.  

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.

Trademark opposition proceedings are civil litigations before the U.S. Trademark Trial and Appeal Board (TTAB).  Companies that wish to enforce their trademark rights through TTAB proceedings should take into account the following pre-filing considerations:

  1.  Standing. Standing is a procedural requirement for all potential opposers.  To establish standing to bring or maintain a trademark opposition, the Opposer must allege a real interest in the outcome of the proceeding together with a claim that it will be damaged by the Applicant’s mark.
  2.   Priority.  In cases where the Opposer is claiming that the offending application will cause a likelihood of confusion with the Opposer’s trademark, the Opposer must allege that is has senior rights. This may be accomplished by showing ownership of a prior U.S. trademark registration or by alleging common law rights that predate the applicant’s first use date or filing date.
  3.  Ownership.  The Opposer should make sure that it is the owner of the senior trademark and file the opposition under its corporate name.   If a related company or licensee is using the trademark, a review of all agreements should be made prior to filing a notice of opposition to ensure rightful ownership and proper chain of title.   Licensees generally do not have standing to bring a trademark opposition proceeding unless specifically governed by a trademark license agreement.
  4.   Jurisdiction.  The TTAB has jurisdiction over the right to register a trademark only.   Even if the Opposer prevails, the TTAB does not have any authority to order the Applicant to cease use of its trademark.  Nor does it have the right to award monetary damages or attorney’s fees.  Only Article III courts such as U.S. District Court has the jurisdiction to enjoin a party’s right to use its trademark in commerce or to award monetary relief to the prevailing party.
  5.  Proper use.  Under U.S. law, trademark rights are based on use.  The fact that an Opposer is the owner of a preexisting trademark registration does not mean that it automatically has superior rights to those of the Applicant.  The Applicant has the right to seek evidence that the Opposer is currently using Opposer’s trademark on all of the goods and services set forth in its pleaded trademark registration.  If the Opposer had never commence use of its mark on some of the goods, or if it has abandoned use on some or all of the goods, then the Opposer’s pleaded registrations are subject to cancellation.
  6.  Likelihood of confusion. The test for whether a trademark applicant’s mark is confusingly similar to a senior owner’s mark has been set forth is a 13-part test known as the Dupont  While no one factor is dispositive, some of the key factors that the TTAB looks at to determine if a likelihood of confusion may exist are (a) similarity of the marks; (b) similarity of the goods or services; and (c) similarity of the parties’ trade channels.

The above checklist is not inclusive.   Other legal and factual considerations should be weighed prior to bringing a notice of opposition.  Such factors include a discussion of preferred business goals, and how to achieve them without the need of a full-trial on the merits.   Often, these goals can be achieved with the assistance of an experienced trademark opposition attorney.

Editor’s Note:   To discuss your trademark opposition or brand enforcement strategy, please contact James Hastings.

More than 5,000 trademark oppositions are filed every year.  One of the grounds for bringing a trademark opposition is that the application is likely to cause confusion with the Opposer’s preexisting trademark.  Yet many trademark opposers are unsuccessful and have their case dismissed.  So prior to filing a notice of opposition, it is advisable to be aware of common mistakes that beset litigants before the US Trademark Trial and Appeal Board.

Mistake #1:  Failure to know TTAB rules.   Procedures for trademark opposition proceedings are set forth in the Trademark Board Manual of Procedure (TBMP).  The failure to follow the strict rules of the TTAB that are contained in the TBMP could result in dismissal of a case or otherwise severely prejudice a litigant’s rights.

Mistake #2.   Failure to assess the case.   Many trademark owners engage in robust trademark monitoring.  This includes filing numerous trademark oppositions against trademark applications deemed to be confusingly similar.  While this tactic can prove successful in certain cases, it could be disastrous where the Opposer fails to adequately research the law and how it may apply to the specific facts of the case.  The lesson here is to assess your strengths and weaknesses before filing a notice of opposition; not after.  No two cases are alike.

Mistake #3.   Overconfidence.   This error in strategic judgment has gotten many a trademark opposer in trouble.   Should the Applicant vigorously defend the opposition and expose fatal weaknesses in the Opposer’s case, the Opposer may be faced with the undesirable choice of either proceeding with the expense of the litigation, or, even worse, face a negative ruling.  This could result in a weakening of the brand owner’s future brand enforcement efforts or even cancellation of its own trademark registrations.

Trademark Management Recommendations:   Brand owners should create and implement a written trademark monitoring and enforcement plan.   Factors to consider are (1) what trademarks should be monitored and enforced; and (2) under what circumstances should third-party applications be opposed.   By creating a written brand enforcement process and updating it once a year, companies can help mitigate their risks and strengthen their trademark portfolios. 

Not all trademark opposition proceedings proceed to a final decision.  In fact, the vast majority of trademark opposition disputes are resolved between the parties or involve trademark mediation.  Estimates are that over 90% of cases before the U.S. Trademark Trial and Appeal Board amicably settled before trial.

Short of the cost and expense of a full trial on the merits, parties may elect to do the following:

  1.   Withdraw the Application.    The Opposer may request that the Applicant withdraw its trademark application in consideration of a consent agreement that the Applicant may use its mark in commerce under well-defined circumstances.
  2.   Narrow the Identification of Goods.    A frequently invoked compromise is for the Applicant to agree to delete certain goods or services contained in its application.  The Applicant would then be permitted to proceed with its registration based on the narrowed identification of goods.  This is so as to avoid a potential likelihood of confusion with the Opposer’s goods and services.
  3.  Trademark assignment and license back.    Under this scenario, the Applicant would assign its ownership in and to its application and eventual registration to the Opposer.  The Opposer would then license-back the mark to the former Applicant for a limited-use purpose under the supervision and control of the Opposer.  This strategy is used in limited circumstances.
  4.  Withdrawal and agreement not to use.   This is a last-resort strategy for an Applicant.  By signing an Agreement not to use the mark in commerce, it generally gives the Opposer contractual rights to police the Applicant’s use of marks in the future that the Opposer may deem to be confusingly similar to its own.    If the Applicant has decided to make the business decision to withdraw its application and not use the mark, it should avoid signing any other documents that would give the Opposer any future right to approve or disapprove new trademarks of the Applicant.
  5.   Trademark Mediation.   Mediation is an effective means for the parties to come together to discuss their dispute and narrow their differences between a qualified trademark mediator.   The mediation may be either binding or non-binding at the election of the parties.

Editor’s Note:  The author is an approved mediator with the International Trademark Association Panel of Trademark Mediators, a professional group that is compromised of approximately 175 mediators worldwide.

For purposes of likelihood of confusion, not all beverage trademarks are created equal.

In Patrón Spirits International AG v. Conyngham Brewing Company, the Applicant sought registration of the mark PIRATE PISS for “beer, ale, and lager” in International Class 32.   Opposer Patron had opposed the application based on its ownership of the previously registered marks PYRAT and PYRAT RUM for distilled spirits and rum in International Class 32.  Patron had disclaimed exclusive rights in and to the term “rum” as uses in the latter mark separate and apart from the mark as shown.  In support of its case, Patron had submitted its registrations, and various internet printouts showing various spellings of the term “pirate.”  In addition, it introduced 13 third-party registrations showing marks where the goods contained both beer and rum.  However, of these, only 6 were use-based registrations, prompting the Board to observe:

Opposer’s submission of the six relevant third-party registrations is not very convincing for purposes of showing that beer and rum are sufficiently related that consumers expect them to emanate from the same source.

There is no per se rule that all beverages are related for purposes of likelihood of confusion.   The Board noted that while beer and wine are often found to be related in trademark oppositions involving beverages, each case must be weighed by its own facts and evidence.   Here, the Board proceeded to conclude that Opposer could not evade its burden of proving relatedness of the goods by “bootstrapping upon previous factual findings made in other decisions on different records.”   In the end, it believed that the both the quality and quantity of Opposer’s evidence was insufficient to prove that beer and rum are related goods for purposes of likelihood of confusion.  This factor, as well as the unique connotation and strong commercial impression of Applicant’s mark helped to distinguish it from Opposer’s mark.  Accordingly, the Board dismissed the Opposition and ruled in favor of Applicant.

Practice Tip:  In proving the relatedness of beverage trademarks, an Opposer should cite to as many third-party use based registrations as possible and further present probative evidence that the related goods in question are in use by the same source.  Note, however, that if the marks being compared are identical or highly similar, the degree of relatedness required between the respective goods need not be as great.