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