In a trademark opposition proceeding, a party alleging a likelihood of confusion pursuant to Section 2(d) of the Trademark Act is required to establish specific elements of proof. If you are a potential opposer, you will have the burden of proving the following evidentiary factors by a preponderance of the evidence:
Standing. Standing is a threshold issue that must be determined in every trademark opposition or trademark cancellation before the U.S. Trademark Trial and Appeal Board. In order to establish standing, the Opposer must show that it has a legitimate interest in the outcome of the proceeding and that it will be damaged should the defendant’s application issue. In a likelihood of confusion case, the Opposer’s standing can be established by introduction into evidence of a preexisting registration that it owns, its later-filed application that was refused based on the Applicant’s mark, or common law use that predates Applicant’s constructive date of first use.
Priority. In Section 2(d) cases, the Opposer has the burden to prove priority of use as well as likelihood of confusion by a preponderance of the evidence. A party may establish its own priority rights through ownership of a preexisting registration, through actual use, or through use analogous to trademark use. Of the three, the least burdensome method is to show ownership of a prior registration.
Likelihood of Confusion. Once the Opposer introduces evidence of its standing and priority, it must show that Applicant’s mark is likely to be confused with the Opposer’s pleaded marks. The analysis of whether a likelihood of confusion exists has been enunciated in the 13 part test found in the case seminal case In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) (the “DuPont Factors”). In its many decisions that have applied the Dupont Factors test, the Board has held that some of the main factors are the similarity of the parties’ marks, similarity of the goods or services, and similarity of the trade channels. Other important factors are the strength of the Opposer’s mark and the number of similar third-party registrations that already exist on the register.
Practice Tips: In evaluating the likelihood of success of a trademark opposition proceeding brought pursuant to Section 2(d), it is important for the potential Opposer to first assess its standing and priority. If the Opposer’s priority cannot be established, then the the Board will deny the Opposition. This means that the issue of likelihood of confusion is moot and will not be considered. By fully vetting the likelihood of success of an opposition prior to filing it, the Opposer may save thousands in litigation fees and not subject its valuable trademark registrations to undue risk. For further information on establishing evidence to support a Section 2(d) case, you may refer to our earlier post on the subject.
To discuss a trademark opposition or trademark cancellation case on the grounds of likelihood of confusion, please contact the author.