U.S. Trademark Trial and Appeal Board

The Trademark Trial and Appeal Board recently released its TTAB filing statistics for fiscal year 2018.   These updated figures include year-to-year changes in the filing of appeals, notices of oppositions, and petitions for cancellations.  It also provides useful information on the disposition of cases.

Highlights include the following:  (percentage in parentheses signifies change over 2017)

I.   Filings

  • Appeals: 3,223; (+2%)
  • Extensions of time to oppose: 19,208;  (+3.9%)
  • Oppositions: 6,496 (+5.5%)
  • Cancellations: 2,253 (+7.2%)

II.   Contested Motions

  • # of decisions issued:  1,082  (+9.2%)
  • # of motions resolved by decision: 1318  (+6.5%)
  • Average pendency:  9.4 weeks  (+20.5%)
  • # of cases with motions awaiting decision:  165 (+12.2%)

III.    Trial Cases and Appeals Pendency

  • Appeals:  35.8 weeks (-7.8%)
  • Trial Cases: 140.3 weeks (-10.8%)
  • ACR Trial Cases:  106.3 weeks (-11%)
  • # of ACR Cases decided:  19 cases
  • Awaiting decision at end of period:  130 cases (+39.8%)

Conclusions

These most recent TTAB statistics yield some interesting observations:

  1.   TTAB litigation is increasing.   Opposition and cancellation proceedings are up on average approximately 6% combined.  This could be due in part to greater brand enforcement efforts being undertaken as a result of a stronger economy.  With regard to cancellations, the USPTO has made it quite clear that “deadwood” registrations that contain goods or services that are no longer used are subject to cancellation either in whole, or in part.  Therefore, the increase in both opposition and cancellation filings could be for offensive as well as defensive purposes.
  2.  There is increased motion practice.   Although both the Board and the Federal Rules encourage the just and speedy resolution of contested proceedings, and for both parties to cooperate fully, this sadly is not always the case.  While it cannot be proven, the failure to cooperate often results in protracted proceedings, including greater motion practice and higher attorney’s fees.
  3.  TTAB is focused on speedier resolution of cases.   The TTAB has made a commitment to several things that will help shorten the inter-partes cases lifecycle, including encouraging the parties to stipulate to Accelerated Case Resolution (ACR) procedures, engage in mandatory discovery conferences where settlement options are explored, and further mandate the cooperation between counsel.

Editor’s Note:   Parties are encouraged to protect their trademark rights at all times.   This is best done through proper monitoring and enforcement.  Should a trademark opposition or trademark cancellation proceeding be necessary to enforce a brand owner’s rights, it is recommended to speak with a qualified trademark attorney experienced in TTAB proceedings.

 

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.

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. 

Trademark cancellation proceedings based on abandonment continue to present challenges to trademark registrants.   In the latest case before the US Trademark Trial and Appeal Board, however, the registrant’s trademark registration was spared.

In AD5 Inc. v. Jennifer M. Estes dba #SELFiE T’s, the Petitioner sought to cancel Reg. No. 4642072 of the Registrants #SELFIE design mark (in a reverse mirror image) for a wide variety of apparel items in International Class 25.  Petitioner had alleged that Registrant had abandoned the trademark.  The relevant statute to prove abandonment is Section 45 of the Trademark Act:

Section 45 of the Trademark Act provides that a mark shall be abandoned when its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances.

The party seeking cancellation bears the burden of proof to establish abandonment by a preponderance of the evidence.  If the Petitioner can show nonuse of the Registrant’s mark for at least three consecutive years, the burden shifts to the registrant trademark owner to show that it was using the mark or that it had an objective intent to resume use.
Here, although Petitioner alleged that Registrant was not using the mark for at least three consecutive years, the Registrant denied the allegation, citing evidence that she maintained her website for the products bearing the  mark and donated goods to potential marketplace customers.  The Board noted that nonuse of a mark due to lack of demand coupled with on-going marketing efforts may not constitute trademark abandonment.  In the end, Petitioner could not overcome Registrant’s evidence of continued marketplace attempts to sell the items.  This case stands as a reminder that the burden of proof always lies with a petitioner to cancel a trademark registration on abandonment grounds.
In addition to not proving its abandonment claim, the Petitioner was unable to establish its standing to bring the petition for cancellation.  Therefore, the Board’s dismissal of the petition was technically due to lack of standing.  The Board nonetheless proceeded to evaluate the merits of Petitioner’s abandonment claim, stating that Petitioner failed to establish its burden of proof.
Note:  The author was a recent CLE Faculty Member for a training webinar on trademark abandonment sponsored by Strafford, a leading educator of attorneys.

A trademark opposition involving beverage trademarks was the subject of our most recent post.  Now, we review a trademark cancellation dispute between two beverage trademark owners.  In both proceedings, the grounds were a likelihood of confusion pursuant to Section 2(d) of the Trademark Act.

In Rebel Wine Co. LLC v. Piney River Brewing Co., Rebel Wine petitioned to cancel Piney River’s Registration No. 4597351 of the mark MASKED BANDIT for beer and brewed malt based alcoholic beverages in the nature of beer.   Rebel Wine plead ownership of Registration Nos. 33119263 and 39743404 both for the mark BANDIT for wine and alcoholic beverages except beers.  The U.S. Trademark Trial and Appeal Board found that Petitioner had priority based on its earlier registrations.

In analyzing the likelihood of confusion between the beverage trademarks, the Board reiterated the well-known rule that two key considerations are the similarities between the marks and the relatedness of the goods.  Considering the marks in their entireties, it found that MASKED BANDIT and BANDIT are similar, therefore weighing in favor of likely confusion.   With regard to the relatedness of goods factor, the proper test is whether consumers would tend to believe that the parties’ respective products emanate from the same source.  Here, the Board observed that both parties had beer and/or wine in the goods covered by its registrations.  The Board also noted that it often concludes that “beer” and “wine” are related goods for purposes of likelihood of confusion.  In the end, it opined that in this proceeding was no different and found that the parties’ respective goods were related.   It also found that the trade channels of the parties and purchasing conditions were similar.  As a result of the totality of the evidence, the Board granted the petition based on a likelihood of confusion and Piney River’s trademark registration for MASKED BANDIT was cancelled.

Practice Note:  While the Board had indicated that each proceeding is different, when it comes to the similarity between wine and beer, it almost inevitably concludes that the two goods are related for purposes of likelihood of confusion.  This is despite the fact that here, Respondent introduced 237 pairs of third-party registrations of the same or very similar marks for wine and beer, respectively, owned by different companies.

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.

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.

When it comes to trademark oppositions, it pays to be Kühl.

In Alfwear Inc. v. Shuff, the U.S. Trademark Trial and Appeal Board was asked to consider whether the Applicant’s KU:L and design trademark for bicycles in International Class 12 created a likelihood of confusion with Opposer’s asserted “family” of KUHL trademarks for inter alia, clothing, bottled water, textile fabrics, lip balm and other items.  Of interesting note is that Opposer’s trademark registrations on which it had relied to constitute a family consisted of multiple variants of the English translation of “cool,” including KUHL, KÜHL, and KUUL.

Family of trademarks.   The Federal Circuit has defined a family of trademarks as a group of marks having a recognizable common characteristic; however, simply using a series of similar marks does not a family make for purposes of protection.  Instead, there must be a recognition among the relevant consuming public that the marks are indicative of a common origin, which is generally established by considering the use, advertising, and distinctiveness of the marks as a whole.  Here, the Opposer introduced evidence that showed that although it used multiple spellings of its “Kühl” mark, it did not establish sufficient proof that it had extensively used all of them in commerce, and in particular, “Kuul” and “Kuhl,” such that it created a family of trademarks.

Likelihood of Confusion.  While there are at least 25 separate grounds that an Opposer may assert for the basis of a trademark opposition, by far, the most prevalent is likelihood of confusion pursuant to Section 2(d) of the Trademark Act.  In determining whether a likelihood of confusion exists under Section 2(d), the Board looks to several factors, with two key considerations being the similarities between the marks and the similarities between the goods or services.  In comparing the similarities between the marks, the Board, unsurprisingly, noted that closeness in spelling between the parties’ marks, and also concluded that consumers were likely to pronounce the two marks similarly.  In analyzing the similarity of the parties’ goods, the Board concluded that since there was ample evidence introduced of third-party party registrations and websites offering both bicycles and outdoor apparel together, this tended to support the conclusion that the Opposer’s and Applicant’s goods were similar.  The TTAB went on to find that since the parties’ goods were offered in the same channels of trade to consumers who exercise a low degree of purchasing care, confusion was likely such that the Opposition was sustained in favor of Opposer.

Practitioner’s Note:  Opposer was unsuccessful in convincing the Board that its “Kühl” marks were famous, despite the fact that it sells its products bearing the Kühl mark in over 1,0000 retail outlets nationwide.  This is due to the fact that Opposer’s introduction of advertising and sales figures alone did not provide context as to the level of exposure and recognition that consumers  might have had to the Kühl trademark in order for it to be considered famous.  The Kühl mark, was, however, deemed to be strong for purposes of the Section 2(d) likelihood of confusion analysis.