A trademark opposition may be commenced based on a likelihood of confusion with a prior registered mark. The statutory basis for a likelihood confusion cause of action may be found in Section 2(d) of the Trademark Act.
To prevail on a Section 2(d) claim, the Opposer must prove by a preponderance of the evidence the following:
Standing. Standing to bring or maintain an action consists of two elements. First is that the Opposer has a legitimate stake in the outcome of the proceeding. In other words, that it is not a mere intermeddler. Second is that the Opposer must allege that it will be damaged if the application for registration issues. Proof of a prior existing trademark registration is a common method for an Opposer to prove its standing. Since standing is a low threshold, it is often met. However, Opposers must be careful to include proof of its standing in its Notice of Opposition. The failure to do so may result in dismissal of the proceeding.
Priority. In a likelihood of confusion case, the Opposer must also establish that it has priority. This means that it has superior trademark rights to that of the Applicant. This can be proven by either asserting a prior trademark registration, prior common law use, or use analogous to trademark use. In any of the above examples, the Opposer must show that its use predates the Applicant’s filing date (in the case of an intent to use application) or use dates based on a use-based application.
Likelihood of Confusion. Assuming the Opposer can prove standing and priority, it then must show that Applicant’s mark is likely to cause confusion with the Opposer’s prior rights. To do so, the Trademark Trial and Appeal Board looks to a 13-part test set forth in the seminal case In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) (the “DuPont Factors”). Although the weight given to the relevant DuPont factors may vary, the following two factors are key considerations in any likelihood of confusion analysis:
- The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
- The relatedness of the goods or services as described in the application and registration(s).
In addition to the above-factors, the Board also looks to the following key factors in making its determination:
- Similarity of the parties’ trade channels
- The conditions under which sales are made to buyers (impulse or sophisticated purchasing decision)
- The number and nature of similar marks on similar good
- Evidence of actual confusion
Each likelihood of confusion case is different as applied to the relevant Dupont Factors. Therefore, it is important for an Opposer to thoroughly analyze the relevant legal standard and factual support for your case prior to bringing a trademark opposition proceeding.
Editor’s note: If your trademark opposition is opposed based on a likelihood of confusion, it is advisable to speak with a qualified trademark opposition attorney. Likewise, if you wish to oppose a third-party trademark application on the grounds that it is likely to cause confusion with your company’s prior trademark, it is best to review the guidelines contained in this article. To discuss your case or for further information, feel free to contact the editor.