Practical Advice for TTAB proceedings was the subject of a session at INTA Boston 2019.
The topics of discussion were as follows:
Difference between TTAB and District Court. Proceedings before the TTAB are usually more narrow and streamlined. This is due, in large part, on the limited jurisdiction of the Board to issues of registrability
Updated: December 2024
U.S. Trademark Opposition: FAQ
A trademark opposition is a contested proceeding before the U.S. Trademark Trial and Appeal Board. Any third-party may oppose the trademark application of another party. An opposition may be filed only when the subject application is published in the Official Gazette of the U.S. Patent and Trademark Office. The time to file an opposition is within 30 days of publication. Extensions of time to file an opposition may be granted for an additional 30 days upon request, and up to 90 days for good cause shown.Continue Reading Trademark Opposition Checklist for Opposers
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).
Revised December 2, 2024
The following trademark opposition checklist will help you determine whether your company should bring a trademark opposition proceeding against a trademark applicant.
Companies that wish to enforce their trademark rights through TTAB
