U.S. Trademark Enforcement

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.

While the term trademark infringement is less than 140 characters, its implications could be costly to a ubiquitous online communications giant.

Twitter, the online news and social networking service, has been accused of trademark infringement and breach of contract by TWiT LLC.   The suit, TWiT LLC v. Twitter, Inc., (N.D. Cal. January 2018) alleges that Twitter has intentionally infringed on the Plaintiff’s TWiT trademark.  Since 2005, TWiT has been in the business of distributing video and audio content over the internet.   TWiT’s programming is available to the public by downloading or streaming from the internet, otherwise known as netcasts.  TWiT is also the owner of U.S. Trademark Registration No. 3,217,759 of TWiT which was registered in March 2007.   The parties are familiar to one another; in fact, one of Twitter’s founders, Evan Williams, appeared on TWiT’s netcast show the same month and year that TWiT received its trademark registration.

So why is the plaintiff chirping so loudly?   TwiT alleges that the parties had a coexistence agreement that Twitter would limit its activities under the TWITTER mark to a text-based blogging service.  Sometime in 2009, the Plaintiff had read that Twitter had plans to expand beyond microblogging and into video and audio streaming.  When TWiT voiced its concern, Twitter gave assurances that such reports of business expansion were inaccurate.  The twelve-count complaint goes on to allege that in or about May 2017, the Plaintiff became aware of Twitter’s intention to indeed offer video and audio streaming services, thereby creating the current controversy.  Twitter has yet to file an answer or otherwise respond to the allegations.

This case raises an interesting lesson on the interplay between trademark infringement and trademark coexistence agreements.   Quite often, competitors are quick to enter into such agreements.  This permits them to proceed with their business activities without interference from the other side, if and only if, the parties adhere to the contract terms.  Quite often, months or years can go by and the coexistence agreement is quickly forgotten.  It is only when one of the parties commits an alleged breach of the contract that the Agreement once again is revisited.  Since most coexistence agreements have penalty clauses, the impact on the breaching party could be severe.

It is vitally important for companies to record and track their coexistence agreements and other contracts that could impact their brand protection and marketing activities.  Brand owners should review these agreements on an annual basis and consider using contract management software to ensure compliance with third-party agreements.   These and other trademark best practices are part of an effective brand management strategy.

If U.S. Trademark Trial and Appeal Board rulings are any indication, the “force” is  apparently with those who invest substantial sums of money into advertising and promoting their brand names.

In a recent decision before the TTAB, Salesforce.com Inc. was successful in preventing Edataforce Consulting, LLC  from asserting its rights in and to the mark EDATAFORCE for registration on the Principal Register. One of the influencing factors supporting judgment in favor of Salesforce.com was its substantial investment in the marketing and advertising of its pleaded family of “FORCE” marks and corresponding sales associated with the subject marks.

Continue Reading Salesforce® Flexes its Muscles before the TTAB

When a company discovers that a competitor has filed a trademark application for a brand name that may be deemed confusingly similar to its own, it has an effective alternative to expensive U.S. District Court litigation: oppose the trademark application by filing a notice of opposition with the U.S. Trademark Trial and Appeal Board (“TTAB”).

Here are 3 considerations when considering to file a trademark opposition proceeding:

Continue Reading Opposing a Trademark Application: Getting Started

Trademark enforcement programs, also known as trademark monitoring programs, provide an important and proactive means for companies to monitor the commercial marketplace and federal and state trademark registries for possible trademark infringement violations.

Companies should consider the following steps to properly protect their valuable trademarks rights in the United States:

1.  Conduct a Trademark Audit

For larger companies, a trademark audit provides a useful means in which to identify and prioritize those trademarks that are either intended to be used, currently in use, and/or may require maintenance in order to remain active on the Principal or Supplemental Register of the United States Patent and Trademark Office records.  Included in the trademark audit should be a review of (a) the companies trademarks and the current scope of legal protection (federal, state, or common law); (b) a determination of which trademarks require additional protection (either in the form of filing for additional goods or services, recording the trademark with the U.S. Customs Service, Trademark Clearinghouse and/or applying for international trademark registration); and (c) confirmation that the chain of title for each trademark is accurately identified, assigned and/or recorded with the U.S. Patent and Trademark Office. Done properly, a trademark audit should be undertaken in close coordination with the company’s U.S. trademark attorneys and legal and business departments responsible for the protection, marketing, and development of the brand names and associated products or services contained in the company’s trademark portfolio.

2.  Subscribe to a U.S Trademark Watching Service

Once the company’s trademarks are properly identified and prioritized, it is advisable to place the company’s trademarks on a trademark watching service.  U.S. trademark attorneys, in conjunction with brand protection services, can routinely monitor U.S. Trademark Office filings for confusingly similar applications that may pose a threat to a company’s trademark properties.  Companies can submit a list of their trademarks to be watched, and the results of trademark applications that have the same or similar words or terms will be routinely furnished to the trademark owner or its U.S. trademark attorneys for further assessment and evaluation.

3.  Monitor U.S. Commercial Trademark Usage

By subscribing to Google Alerts and/or a commercial trademark watching service, companies can routinely monitor the marketplace for trademarks and brand names that could be confusingly similar or that dilute the strength of their own trademarks.  Once such trademarks are identified, the company’s U.S. trademark lawyers can properly assess the threat as viewed in conjunction with U.S. trademark law and determine what action, if appropriate, might be advisable.  The U.S. trademark attorney should carefully review the infringing application or use and advise his/her client of its options to either file a trademark opposition, send a cease and desist letter, or both, where appropriate.  In circumstances where the trademark infringement is immediate and serious, instituting a U.S. federal court action for trademark infringement and associated causes of action may be required.

Trademark attorney notes:  Creating a U.S. trademark audit and brand enforcement plan is a wise investment for companies that provides a relatively inexpensive and proactive means to routinely protect and enforce trademark holdings in the United States. To discuss how a trademark audit could benefit your company or domestic and international brand name clients, feel free to contact the author.