In the trademark opposition case, Halo Trademarks Limited v. Halo 2 Cloud LLC,
Trademark imagethe Opposer opposed the intent to use application of Applicant’s mark HALO  for handbags, briefcases,  electric adapters and a wide variety of other business accessories on the ground of likelihood of confusion under Section 2(d) of the Trademark Act.  As the basis for its opposition, Opposer relied on its previously used HALO and HALO and Design marks for numerous business accessories in International Class 18, including certain goods applied for by Applicant.
To prevail on a likelihood of confusion claim brought under Trademark Act Section 2(d), a party must first prove that:
  • it owns “a mark registered in the Patent and Trademark Office or a mark or trade name previously used in the United States …and not abandoned….” Trademark Act Section 2, 15 U.S.C. § 1052.

Here, the Opposer did not have a registration for its own HALO marks and therefore was required to establish its prior proprietary rights in and to the mark through testimony and documentary evidence showing actual use or use analogous to trademark use.   Accordingly, the Opposer sought to rely on its intent to use application for HALO to establish constructive use priority rights in and to the mark.  The filing date of Opposer’s intent-to-use applications was March 19, 2010, which preceded Applicant’s filing date of its HALO mark of May 5, 2014.  Neither party took testimony evidence and submitted notice of reliance of their respective applications and discovery requests and responses.

The  U.S. Trademark Trial and Appeal Board ruled that the Opposer was entitled to rely on the filing dates of its intent to use applications to establish constructive use of its HALO mark as of that date pursuant to Section 7(c) of the Trademark Act.  That being said, in order to prevail based on trademark priority, any judgment entered in favor of the Opposer would be contingent on the Opposer actually using its marks in commerce and registration issuing on its pending applications.  In addition to establishing priority of rights, the Opposer would still have to bear its burden under Section 2(d) that Applicant’s HALO mark was likely to be confused with the HALO marks of Opposer.
The Board concluded that the parties’ respective marks as examined in connection with the goods and respective trade channels, pointed towards the conclusion that they were confusingly similar in sight, sound, meaning, and commercial impression such that the Opposition should be granted and registration refused.   Therefore, the Board entered judgment, contingent on the issuance of the Opposer’s pending applications.

In a recent case before the U.S. Trademark Trial and Appeal Board, the TTAB provided useful guidance regarding the burden of proof that parties must meet in trademark opposition proceedings.

In Brick Bodies Fitness Services, Inc v. BRIK Fitness Solutions LLC, the Board held that the mark BRIK FITNESS and Design was likely to cause confusion with Opposer’s mark, Brick Bodies based on the similarity between the parties’ marks and respective health and fitness services.  In so ruling, the Board raised the following observations that touch upon several related issues that litigants face in trademark opposition proceedings:

  1.  Assertion of a “family” of marks.   Here, the Opposer Brick Bodies sought to assert rights in and to four separate trademarks – namely, Brick Bodies, Lynne Brick’s, Build Your Body with Brick, and Brick Bodies Extreme, claiming that collectively they constituted a family of “BRICK” marks that were entitled to greater protection.  The Board opined that the mere use of a common term in multiple trademarks owned by the same party does not a “family” make for purposes of trademark rights.  Instead, other factors must be examined, including the public’s recognition of the marks as emanating from the same source, as supported by website visitors or other consumer perception factors.
  2.   Strength/Weakness of marks.  Applicant claimed that the Opposer’s “brick” marks were weak, since the “brick” derivative of Opposer’s marks were derived from a combination of the surnames of the founders of the company.  The Board rejected this argument, stating that the term “brick” is commonly perceived to relate to a hardened clay block, and not primarily merely a surname.
  3.   Third-party trademark uses.   Applicant submitted into the record evidence of numerous third-party listings for fitness facilities that use the term “brick” as part of their name from several locations throughout the United States.  Surprisingly, and without explanation, the Board reasoned that although use of similar marks on similar goods by third-parties is relevant to show that a mark is weak and entitled to a narrow scope of protection, the Applicant failed to show the extent of such third-party uses.  Therefore, the Board summarily concluded that the uses provided by Applicant were limited in geographic scope and not probative to show that consumers would be aware of such third-party uses.

In the end, the Board relied on the standard likelihood of confusion analysis based on the similarity of sight, sound, and meaning of the parties’ respective BRICK BODIES and BRIKFITNESS marks, together with the similarity of the parties’ services, to deny registration and rule in favor of the Opposer.

The Trademark Trial and Appeal Board is quick to throw the flag — just ask the NFL and New York Giants.

In the matter of In re New York Football Giants, Inc., the TTAB sent a strong signal in upholding the Trademark Examiner’s refusal to register the Giants’ trademark for G-MEN  for “shirts, t-shirts, and tops” on the grounds of a likelihood of confusion with the previously registered trademark GMAN SPORT for “boxer shorts; socks, t-shirts, and tank tops” in International Class 25.

On appeal, the Giants had forcefully argued that the term G-MEN was a well-known moniker of the NFL team going back decades and that the fame of the mark as associated with New York Giants precluded any finding of likelihood of confusion between the Giants’ mark and the cited registration.  The Giants stated that the Board, in essence, incorrectly applied a one-size-fits-all approach in its likelihood of confusion analysis, and did not properly take into account the Giant’s notoriety and fame as associated with the G-MEN name.  By comparing the two marks in the abstract, and ignoring marketplace conditions, the Board, according to the Giants,  committed a “fundamental and grievous error.”

In its response, the Trademark Board was equally forceful, stating that it was obligated under its long-standing precedent to adhere to the identification of goods in both parties’ trademark filings, and to construe them broadly in comparison of the two marks in determining whether confusion was likely.  Put another way, the Board expressly stated that it was improper for it to consider any extrinsic evidence regarding the Giants’ fame and limited use of its G-MEN mark on football apparel, and that the NY Giants could have, but did not, limited the goods in its application for registration to football-related items only.   Having failed to do so, the Board reasoned that its conclusion in refusing the application was proper:

Thus, where there is no specific limitation in the description of goods and nothing inherent in the nature of Applicant’s mark that restricts Applicant’s usage to football related merchandise or the promotion of a particular football team, the Board may not read such limitations into the application.

Hats off to the Giants for making a vigorous goal-line stand.  Unfortunately, the defensive line of the Trademark Office held firm in this contest.

Trademark Attorney Notes: When faced with an initial refusal of a trademark application based on a likelihood of confusion with a previously registered trademark, amending the identification of goods to narrow the identification to a specific sub-segment of products or class of customer should always be considered.  In doing so, it may be possible to avoid a final refusal based on a more expansive analysis of the parties’ goods as reflected in the outcome of this case.

Take cover, a trademark gunfight is brewing!

The First Shot: Duke University

John Wayne, our matinee idol, the symbol of the American West, is being tested once again.  No, not on the silver screen, but before the U.S. Trademark Trial and Appeal Board.  His antagonist?  Duke University, best known for stellar academics, bucolic settings, and Coach K.

Yes, it takes true grit to oppose The Duke.

In the trademark opposition, Duke University v. John Wayne Enterprises LLC,  the Opposer, Duke University (“Duke U.”), has challenged John Wayne Enterprise’s (“JWE”) application for registration of the mark DUKE for  “alcoholic beverages except beers, all in connection with indicia denoting the late internationally known movie star, John Wayne, who is also known as Duke.”  This is the latest chapter in Duke University’s fight against JWE, with Duke having either opposed or sought to cancel several other trademark registrations of JWE that contain the “Duke” moniker over the years.

In this most recent Notice of Opposition, Duke U. relies on several of its trademark registrations for “Duke” and its derivatives for a wide variety of goods and services, including Duke, Duke University, Dukie, and Iron Dukes ID.  Duke U. argues that JWE’s registration of the “Duke” moniker will be likely to cause confusion among the relevant consuming public as well as dilute Duke U.’s family of DUKE marks that it considers to be famous by virtue of the University’s long-standing use and sales of goods and services under the DUKE trademark.

The Big Gun Response- John Wayne Enterprises

Having had enough of Duke U.’s trademark confusion accusations, JWE has filed a federal lawsuit in U.S. District Court, seeking an order that JWE’s use of its Duke mark will not and does not cause confusion nor dilute Duke U.’s trademarks.   As reported by the Associated Press, there are over 250 existing federal trademark registrations that contain the name “Duke,” which may prove to be problematic to Duke University’s theory of its case.

Trademark Attorney Notes:  This case is a good example of when brand owners with well-known trademarks aggressively file trademark oppositions against third-party trademark applications that contain part or all of the Opposer’s trademark.  This strategy often results in a trademark applicant withdrawing its application and in certain instances, not proceeding to use its trademark in commerce.  There are a percentage of cases, however, as seems to be the case here, where the Applicant decides to make a stand.  The result?   The Opposer is forced to prove its case, something it does not have to do when successfully negotiating a trademark opposition settlement.  Therefore, trademark owners who oppose trademark applications should always make sure that they have a strong case, rather than gambling on the chance that the trademark owner will simply surrender without a fight.

Trademark owners often have situations where their trademark application has been refused by the U.S. Patent and Trademark Office due to a preexisting trademark registration.  If the refusal to register is maintained, then filing a petition for cancellation of the cited trademark registration may be an effective means to ensure that their trademark rights are perfected.

What is a Petition for Cancellation?  In the United States, trademark owners have the right to cancel a trademark registration of any other party that it believes may be damaging to its own trademark rights. Petitions for cancellation of a trademark registration are heard before the U.S. Trademark Trial and Appeal Board, the adjudicative body of the United States Patent and Trademark Office. 

What are the steps in a Petition for Cancellation proceeding? The procedural rules of U.S. trademark cancellation proceedings may be found in the Trademark Trial and Appeal Board Manual of Procedure.  Deadlines and procedures before the Board are specific, and must be followed at all times. Therefore, strict adherence to the rules is encouraged of all parties appearing before the Board.

What are the Grounds for a Cancellation?  Petitions for cancellation of a trademark registration are governed by 15 U.S.C. Section 1064. There are several legal grounds that exist to cancel a trademark registration, including priority, abandonment (by non-use of at least three consectuive years together with an intent not to resume use), and fraud.  There are additional grounds as well, such as priority of use and genericness.

When can a trademark cancellation action be filed?   The time in which a cancellation action must be filed depends on the grounds for cancellation.  A cancellation petition may be filed at any time (1) within five years of the trademark registration date, (2) at any time if the trademark becomes abandoned, or (3) at any time if fraud is alleged in the procurement of the trademark registration, or (4) if any time the registered mark becomes merely descriptive or generic of the goods or services for which it is registered.

Parties should note that trademark cancellation proceedings are adversarial proceedings, and, like any other civil proceeding, require specialized knowledge of the law and procedures.  Therefore, it is always best to consult with a trademark cancellation attorney.

Companies often wonder what recourse that may have when another party is infringing on their valuable trademark rights.  In proceedings before the United States Patent and Trademark Office, two causes of action generally come to mind: opposing a trademark application and canceling a trademark registration.  It is helpful to briefly distinguish the elements of each cause of action and when it can be used.

Opposing a Trademark Application.  A trademark opposition is when a party opposes a trademark application of a third-party.  Any party who believes it may be injured by the registration of a trademark by another may file a Notice of Opposition in the Trademark Trial and Appeal Board of the United States Patent and Trademark Office.  Although there are several grounds for bringing a trademark opposition, one of the most common is that the trademark of the Applicant is likely to cause confusion, cause mistake, or otherwise deceive the relevant consuming public into believing that the goods or services of the Applicant are identical to, sponsored by and/or endorsed by the opposing party.

Canceling a Trademark Registration.  A trademark cancellation is the legal mechanism that a party may invoke to cancel an existing trademark registration of a third-party. Some of the grounds for canceling a trademark registration include that the trademark has become generic of the goods or services it describes; non-use of the trademark by the registrant for at least three consecutive years without an intention to resume use; and fraud on the Trademark Office in procurement of the registration.

Identity of the Parties. In a trademark opposition proceeding, the party in the position of the plaintiff is the Opposer and the defendant is the Applicant.  The Opposer has the burden of proof to prove the allegations by a preponderence of the evidence.  In a trademark cancelation proceeding, the Petitioner is the plaintiff and the Respondent (or Registrant) is the defendant. The Petitioner in a cancellation proceeding carries the burden of proof.

It should be noted that the jurisdiction of the U.S. Trademark Trial and Appeal Board, the administrative body that adjudicates trademark opposition and trademark cancellation actions, is limited to the registration/non-registration of a trademark.  It does not have the authority to order any party to cease use of a trademark in commerce.  That jurisdictiional authority rests with various state and federal courts.

Once a trademark opposition proceeding has been commenced, there are several procedural and substantive means by which the parties may bring about an amicable resolution of their dispute. Knowing how to effectively negotiate a favorable outcome is essential.

Substantive strategies to settle a trademark opposition proceeding include:

1. By Amendment: by narrowing the identification of goods in the application, it is possible to allay the concerns of the trademark opposer through the deletion of those goods in the application that it finds most objectionable.

2.  By Withdrawal:  Quite often, the trademark opposer’s main concern is to keep confusingly similar trademarks from appearing on the principal register. In this case, the parties may agree for the trademark applicant to withdraw its application in exchange for a promise that the trademark opposer will not object to the applicant’s use of the trademark in commerce.

3. By Timing:  Trademark opposers have little incentive to settle until after the completion of the discovery period.  At that time, the parties are better able to assess the strengths and weaknesses of their respective positions.  If you are the applicant, it is best to wait to discuss any possible settlement until at least after the Answer has been filed.

Procedural methods to conclude a trademark opposition proceeding include:

1. Withdrawal by Opposer:  Under the Code of Federal Regulations that governs trademark opposition proceedings, a trademark opposer may withdraw its opposition without prejudice at any time prior to the Applicant’s filing of the Answer.   if the opposition is withdrawn after the answer has been filed, then the written consent of the applicant is required for the opposition to be withdrawn without prejudice.  Without such consent, the withdrawal of the opposition will be deemed to be with prejudice to the Opposer’s right to reinstitute a proceeding at a later date.

2.  Withdrawal by Applicant: After a trademark opposition has been commenced, an applicant may expressly abandon its trademark application only with the written consent of the Opposer.  The failure to obtain the written consent of the Opposer shall result in judgment being entered against the Applicant.

An experienced trademark opposition attorney will be able to discuss the best available options to settle a trademark opposition case in a manner most favorable to his/her client.  By doing so, it may save precious time and money in product development and marketing costs associated with the trademarks at issue.  Additional trademark opposition settlement strategies will be discussed in future posts.

The Trademark Trial and Appeal Board offers a helpful frequently asked questions section that provides basic information regarding the trademark opposition and trademark cancellation process.  Various Trademark Trial and Appeal Board subjects are summarized, including:

  • What is a Trademark Opposition?  A trademark opposition is when one party contests the application for registration of a trademark by another party.  Quite often, the bssis for the opposition is a likelihood of confusion with the Oppoer’s previously registered trademark.  A trademark opposition proceeding is commenced by filing a Notice of Opposition. 
  • What is a Trademark Cancellation?  A trademark cancellation is when one party seeks to cancel the trademark registation of another party.  Grounds for a trademark cancellation may include fraud, abandonment (by lack of use for three consectutive years and an intention not to resume use), and other grounds, such as genericness. A trademark cancellation proceeding is commenced by filing a Petition for Cancellation.
  • What is the Procedure for a Trademark Opposition?  After a Notice of Opposition has been filed, the Trademark Trial and Appeal Board will serve a copy of the Notice on the Applicant, together with a schedule of the discovery and trial dates.  The Applicant will have forty days from the maling date of the Trademark Board’s notice of commencement of the case in which to Answer or otherwise plead.
  • What is the Procedure for a Trademark Cancellation?  After a Petition for Cancellation has been filed, the Trademark Trial and Appeal Board will serve a copy of the Petition on the trademark registrant, together with the discovery and trial schedule.  The trademark owner will then have forty days from the date of the Trademark Board’s notice of commencement of the trademark cancellation proceeding to either answer, or otherwise plead.

Parties who have trademark opposition or trademark cancellation matters before the Board should note that the Trademark Board rules of practice are extensive and must be followed without exception so as to protect the parties’ procedural and substantive trademark rights. These rules may be found in the Trademark Board Manual of Procedure.

The term “trademarking” is one often used by businesses and almost never used by trademark lawyers.  The reason?  Because the phrase “trademarking” does not accurately reflect how US trademark law and protection works.

Under US trademark law, trademark rights are based on use of the trademark or brand name in commerce.  Therefore, strictly speaking, registration of the trademark is not required.  However, owning a federal trademark registration is highly recommended in most instances, as it provides several legal and commercial advantages, such as:

  1. The ability to bring an action for trademark infringement in U.S. federal court
  2. Reliance on the U.S. trademark registration to obtain registrations in foreign countries
  3. The ability to file the U.S. trademark registration with U.S. Customs to prevent importation of infringing or counterfeit goods

 If you have an unregistered trademark, you may use the “TM” (trademark) or “SM” (service mark) designation.   The federal registration symbol “®” can only be used after the trademark achieves registration status in the United States Patent and Trademark Office.

Contrary to popular belief, obtaining a federal trademark registration is often nuanced and difficult, and is not the same as registering a trade name with the Secretary of State’s Office of a company’s home location. Therefore, it is highly advisable to consult a top trademark lawyer prior to using a trademark in commerce in association with goods or services.  By speaking with a trademark lawyer early in the product naming selection process, it may be possible to avoid large and unnecessary litigation costs that may arise from ignorance of U.S. trademark law.

A substantial number of trademark opposition cases before the Trademark Trial and Appeal Board are settled prior to a final determination on the merits.   The Board encourages parties to engage in settlement discussions early in the process, and has made these discussions part of the mandatory discovery conference between the parties.

Do the parties take advantage of the opportunity to discuss trademark opposition settlement?   Quite often, the answer is no.   There are many reasons for this unwillingness to explore an amicable settlement to the dispute, including:

  • Personal animosity between the respective parties
  • Trademark bullying (discussed elsewhere in this Guide)
  • Trademark lawyers who do not wish to see an early resolution of the dispute
  • Legitimate legal and business rationale

When faced with a notice of trademark opposition, the first thing to do is to seek advice from a trademark opposition attorney who can explain the nature of the case, potential merits of the claim, likelihood of success, and options for settlement.  Litigants should realize that a trademark opposition is a civil litigation that can be long and protracted.  Therefore, it is best to understand the options available to the trademark applicant or trademark opposer before proceeding. 

Trademark opposition attorneys are well-versed in the complexity and detail of trademark opposition rules of evidence and procedure.  Most will provide a complimentary consultation with the party to enable it to make an informed decision on how to best proceed with their trademark opposition case.  The trademark opposition lawyer should also discuss its fee options, including either an hourly fee or flat-fee for representation based on the various stages of the case.

Be sure to speak first with an experienced trademark opposition lawyer — you will be glad you did.