Trademark Opposition

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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

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.

We recently spoke with Thomas Huthwaite, senior associate at Baldwins, to discuss New Zealand trademark protection issues.   Thomas has been named as “one to watch’” by the Legal 500 Asia-Pacific.

Please tell us a little about your trademark and brand protection practice.

I am a New Zealand barrister and solicitor, and registered Patent Attorney.  Since joining Baldwins Intellectual Property in 2010, I have been involved in litigation and dispute resolution work for a number of high profile international clients, including US-based companies Harley-Davidson Motor Corporation, Motorola, and Pepsico.  Some of my work has resulted in leading New Zealand trade marks jurisprudence, including:

  • Crocodile International Pte Ltd v Lacoste [2017] NZSC 14, the leading case on “non-use” of a trade mark
  • Zoggs International Limited v Sexwax Incorporated [2013] NZHC 1494 and Sexwax Incorporated v Zoggs International Ltd [2014] NZCA 311, leading cases on “bad faith” and “reputation” respectively

What should U.S. companies be doing to protect their valuable brand names in New Zealand? 

Early clearance and registration are certainly recommended as first steps for any brand owner.  New trade mark applications are published for potential opposition purposes at the end of each month, and opposition remains open for three months.  Monitoring for new applications and published marks is recommended in order to ensure that potential oppositions are identified early.

Marketplace, company name registration, and/or domain name registration searches are also recommended for certain industries, in order to identify potential or proposed use.  Customs notices are also recommended for those concerned about counterfeit goods, and can be a useful means of monitoring both imported and exported goods. Most disputes in New Zealand arise from the adoption of confusingly similar marks by different parties (rather than the misappropriation of marks, or adoption of identical marks).  Early identification and potential challenge increase the risks of successfully preventing the use of confusingly similar marks.  Early intervention also reduces the risk of dilution, damage, and/or customer confusion.

What is required for a company to be eligible to file a trademark opposition in New Zealand? 

 Broadly speaking, there are four types of trade mark proceedings in New Zealand: 

  • Opposition (before the Commissioner of Trade Marks, seeking to prevent registration of an application);
  • Invalidity (before the Commissioner of Trade Marks or the High Court, seeking to invalidate an already-registered mark);
  • Revocation (before the Commissioner of Trade Marks or the High Court, seeking to remove a mark for non-use); and
  • Infringement (in the High Court, requiring a registered trade mark).

There is no locus standi or other standing requirement for filing a trade mark opposition in New Zealand.  Potential opponents are encouraged to either oppose or seek an extension of time for opposing within the initial 3 month deadline, as it is much easier to oppose registration than to apply to invalidate an already-registered mark.  Potential grounds for opposing include that the mark applied for is likely to deceive or confuse consumers (for example, on the basis of the opponent’s prior use or registration of a similar mark), that there has been a false claim to ownership (including no intention to use the mark as applied for), that the application was made in bad faith, and/or that the application is contrary to law (including copyright law, consumer law, or common law).

What are some of the risks to international companies who decide not to file a trademark opposition? 

Not filing a trade mark opposition can be hugely detrimental, depending on the circumstances.  It may become impossible for the potential opponent to later challenge a registered mark (or its use), particularly if the owner of the registration has used the mark in New Zealand and established a reputation in the mark for itself.

New Zealand cases will typically be decided on a priority basis, meaning first to use or register should prevail.  However, it can be difficult to obtain evidence of use, which must have been genuine, within New Zealand, and may need to surpass mere “use” to establish a “reputation” or “goodwill” (depending on the type of proceeding or challenge).  This can also become clouded by any subsequent use of the same or a confusingly similar mark by a different entity. 

Early registration is therefore always desirable and recommended.  This is especially true given that trade mark infringement proceedings require a trade mark registration, and given that use of one’s trade mark registration provides an absolute defense to infringement.

If opposition proceedings are not filed, invalidity and revocation proceedings are still available.  However, as mentioned above, the burden in such cases does tend to become heavier for the challenger.  In the meantime, the challenger may also be prevented from freely using its mark in New Zealand, given the potential threat of infringement.  In-keeping with the general principles of priority, honest prior or concurrent use can provide a defense to infringement.

Editor’s note:   U.S. or international companies interested in speaking with Thomas about New Zealand trademark protection strategies may contact him directly via email or Linkedin.

We recently spoke with Blake Knowles, partner at Cullen’s, to discuss Australia trademark protection issues.

1.  Please tell us a little about your background and brand protection experience.

Since joining Cullens, I have been responsible for managing, protecting and enforcing the trademark portfolios of several successful and well known Australian and overseas companies. I regularly prosecute trademark applications, represent clients in trademark oppositions and removal proceedings, and assist with enforcement of trademarks and resolution of disputes.

I was previously employed for ten years in the Australian Trade Marks Office. I am a former Senior Examiner, Principal Examiner and Examination Team Leader. During my time as an Examiner, I assessed several thousand trademark applications. As an Examination Team Leader, I was responsible for the management and mentoring of twelve other trademark examiners.

At the time I left the Australian Trade Marks Office, I was the Assistant Director of Trade Marks Hearings & Oppositions. In this role, I worked on a range of trademark legal and policy issues and was also responsible for authoring significant parts of the Trade Mark Office Manual of Practice and Procedure as well as creating training modules for trade mark examiners.

2.  What should U.S. companies be doing to protect their valuable brand names in Australia?  

Fortunately in Australia it is rare for applications to be filed in bad faith for the purposes of usurping a valuable overseas brand. Most disputes arise from adoption of similar marks by multiple parties.  The usual strategies for brand protection should be employed: i.e., registering early (claiming convention priority where possible from foreign applications), obtaining clearance searches prior to commencing use, and monitoring whether applications have been filed by other parties for key marks (or confusingly similar marks). Local distributors should also be tasked with watching the market and reporting any potential infringements early.

3.   What is required for a company to be eligible to file a trademark opposition in Australia? 

There is no standing requirement to file a trademark opposition in Australia or to commence a non-use removal proceeding.  It is much easier and more cost effective to prevent registration of a conflicting trade mark during the opposition period, compared to challenging the mark post-registration. However, the  Australia trademark opposition period is very short (2 months), and extensions are difficult to obtain.  Opponents who neither reside or carry on a business in Australia can be requested to pay security for costs at the commencement of opposition proceedings. If security is not paid, the Registrar has discretion to dismiss the opposition.  

4.   What are some risks to companies who decide not to file a trademark opposition?

The biggest risk is exclusion from the market or ring fencing.  Generally, if a company has first use and subsequent continuous use of a mark in Australia for particular goods or services, they should be able to defend an allegation of infringement by another registrant, and they will also have good prospects of obtaining their own registration on the basis of prior use (i.e. common law rights). However, their rights may be limited to the goods for which they have actually continuously used the mark in Australia, and this may inhibit expansion of activities in the Australian market.  Further, unless the company can afford to challenge a third party registration (which must done through the courts), they may need to co-exist with the other registrant in the market, which can create commercial difficulties and brand dilution.

5.   Do you have any other advice for companies who seek to obtain Australia trademark protection?

Many trademark applications are now filed in Australia via the Madrid Protocol. Such applications often designate many countries, and Australia is rarely the primary market of interest for such applicants. As such, an applicant who has filed via Madrid Protocol may be reluctant to incur costs defending an opposition in Australia. This can often result in an opponent winning by default, when a defense is not filed by the applicant.  Another useful strategy is to register key brands as domain names in the .com.au space. Other companies who may wish to adopt an identical brand to a foreign company may be discouraged if they cannot acquire the corresponding domain name in the .com.au space.

Editor’s Note:  U.S. or international companies interested in speaking with Blake about Australia trademark protection strategies may contact him directly via email or Linkedin.

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.

A recent trademark opposition case before the U.S. Trademark Trial and Appeal Board presents a discussion of priority based on common law rights.

In Mazama Brewing Company, LLC v. Sumerian Brewing Company, LLC, Applicant sought registration of the mark HOPRUPTION DOUBLE IPA for beer in Class 32.  Opposer brought a motion for partial summary judgment based on likelihood of confusion with its mark HOP ERUPTION for beer; and false suggestion of a connection with Opposer.  Opposer assertion of common law trademark  rights was  based on its use of the HOP ERUPTION Mark dating back to May 2013.  Applicant’s filing date was February 8, 2017.

In support of its claim of common law priority, Opposer submitted various newspaper articles, invoices, social media mentions, customer testimonials, and label approvals for its HOP ERUPTION product dating back to 2013.  Opposer further argued that the parties goods were identical and traveled in the same channels of trade.  Opposer also claimed that purchasers of beer products are more likely to make impulse purchases, thereby making confusion more likely.   Moreover, since Applicant had to disclaim  “DOUBLE IPA” as being descriptive of beer, the comparison between the marks was HOPE ERUPTION and HOPRUPTION.  Opposer argued that this meant the both marks conveyed the same commercial impression.

Applicant argued that Opposer’s common law rights and evidence were limited to Oregon and to a lesser degree Washington state only.  Additionally, Applicant argued that any likelihood of confusion was diminished by the existence of numerous third-party marks for beer that contained the terms “hop” and/or “eruption.”

To establish priority of use, a party must show that its owns a mark or trade name previously used in the United States and not abandoned.  A plaintiff may prove prior use through either actual use or use analogous to trademark use, such as advertising brochures, newspaper publications, or websites which create a public awareness of the designation of the trademark as an identifying source.   Here, the Board concluded that Opposer met its burden on the issue of priority by showing prior use of the HOP ERUPTION Mark dating back to at least 2013.  With regard to the likelihood of confusion claim, the Board found that Opposer had not met its burden of demonstrating that there was no genuine issue of material fact regarding certain of the likelihood of confusion factors.  Accordingly, Opposer’s motion for summary judgment on the issue of likelihood of confusion was denied, even though the Board found that it had established its priority common law rights.

Practitioner’s note:   It is important for companies to establish documentary evidence of its trademark use as early as possible.  This is vitally important should its common law rights be contested at some time in the future.  Innovative companies such as Cognate assist brand owners in recording such marketplace evidence using blockchain technology.  By way of full disclosure, the author is an advisor to Cognate and its principals.

Trademark oppositions in the United States are, on average, the most expensive in the world.  So what does it take to protect and enforce brands in other countries?

Over the coming months, some of the world’s leading trademark professionals will be sharing with us insight on the trademark opposition process in their own jurisdictions.   By doing so, American companies will be able to better gauge what is needed to protect their valuable brands on a global basis.  This series of useful posts will include brand enforcement guidance and tips such as:

  1.  Case assessment.   Prior to bringing a trademark opposition, it is important to first determine the strength of one’s own trademark rights.  This analysis depends, in part, on the legal requirements for priority, standing, and likelihood of confusion that exist in each country.
  2.  Duration and costs.   Some countries have streamlined opposition processes that save clients both time and money.  Others are similar to the U.S. system and could result in protracted litigation and increased fees.  We’ll find out which world trademark jurisdictions offer the most value for brand protection.
  3.  Dispute resolution alternatives.   INTA’s Trademark Mediators Network is a non-litigation alternative to contested trademark proceedings. Currently, there are over 150 approved INTA mediators across the globe, each with unique training and insight to help litigants achieve their brand protection goals in a collaborative manner.  We’ll hear from our experts whether mediation is used in trademark disputes in their countries, and if so, in what types of cases.

In addition to providing practical advice, each guest commentator will share his or her professional background and experience.  We hope that our world trademark opposition overview will assist U.S. companies and inhouse counsel to make informed decisions about their international trademark portfolios.

To international trademark associates:   If you would like to be considered as a guest column commentator, please contact the blog publisher.

The U.S. Trademark Trial and Appeal Board has disclosed first and second quarter filing and pendency statistics for 2018.   Year to date (YTD) statistics as compared to the same period in 2017 include the following:

U.S. Trademark Trial and Appeal Board filings

  • extensions of time to oppose:  9,498  (+2.7% YTD)
  • trademark oppositions: 3,211 (+4.3% YTD)
  • trademark cancellations: 1,143 (+8.8% YTD)
  • trademark appeals: 1,643 (+4% YTD)

Pendency of Proceedings  (commencement to completion processing times)

  • trial cases (average):  140.6 weeks (-10.6% YTD)
  • trial cases (median):  126 weeks (-14.9% YTD )
  • ACR trial cases (average): 112 weeks (-6.2% YTD)

Contested Motions

  • decisions issued:  535 (+8% YTD)
  • average pendency: 9 weeks (+15.4% YTD)
  • cases awaiting decision: 172 (+17% YTD)

Of note is the increase in trademark cancellation proceedings as well as trademark oppositions.  This may be a sign of greater brand enforcement efforts by companies.  At the same time, there are mixed performance trends within the TTAB itself.  While the pendency of proceedings has decreased, the average pendency of contested motions has increased.   One reason may be due to the inability of counsel to fully cooperate in discovery disputes, with an increase in contested motions being an unfortunate result.

TTAB filing and performance data for 2015 and 2016 may be found here.

Practitioner’s Note:   The importance of cooperation with opposing counsel in the prosecution or defense of TTAB proceedings should not be overlooked.   Where antagonism and lack of communication are the norm, increased client expenses and unnecessary motion practice often follow.  This can have a direct impact on the  risk and costs associated with trademark opposition proceedings. 

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.