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.