When a company discovers that a competitor has filed a trademark application for a brand name that may be deemed confusingly similar to its own, it has an effective alternative to expensive U.S. District Court litigation: oppose the trademark application by filing a notice of opposition with the U.S. Trademark Trial and Appeal Board (“TTAB”).
Here are 3 considerations when considering to file a trademark opposition proceeding:
Step 1: Know Your Burden of Proof. As plaintiff, the Opposer always has the burden of proof in a trademark opposition proceeding. As such, any and all legal grounds for bringing a trademark opposition has an associated burden of proof that the Opposer must meet by a preponderance of the evidence. For example, if the opposition is based on a likelihood of confusion under Section 2(d) of the U.S. Trademark Act, the TTAB generally will apply the likelihood of confusion factors enunciated in the case In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) to determine whether confusion is likely. In assessing the merits of its case, an Opposer should consider the Dupont factors and any other factors that can impact its case, including any and all affirmative defenses or counterclaims that the Applicant may raise in its defense.
Step 2: Determine How to Commence Your Claim. Potential Opposers have a couple of options available to them, including writing a cease and desist letter to the Applicant putting them on notice of its intention to potentially oppose the trademark application. Alternatively, an Opposer can simply file the Notice of Opposition without notifying the applicant by way of informal letter. In the case of a pre-filing letter, the Opposer should adquately assert its claim of priority in and to its trademark, and request that the applicant immediately withdraw its trademark application. Opposers can also demand that the trademark applicant either promise not to commence use of its trademark (in the case of an intent-to-use application filed under Section 1b of the Trademark Act) or cease use of its mark (if the application is based on use under Section 1a of the Trademark Act).
Step 3: File the Notice of Opposition. Under relevant trademark rules of practice, Opposer’s have 30 days from the date of publication of a trademark in which to file a notice of opposition. Before filing the Notice, the Opposer’s trademark attorney should adequately explain to the Opposer what a trademark opposition case entails, including all procedural steps that are included, such as pleadings, discovery, and the trial testimony components of the case. It is also helpful for the attorney who is handling the trademark opposition to discuss with the Opposer potential settlement strategies that may be utilized once the Notice of Opposition proceeding is commenced, to determine whether it may be possible to achieve a favorable, negotiated resolution of the dispute without incurring additional legal fees and costs.
By carefully evaluating the above considerations, brand owners who wish to oppose a trademark application of a competitor may do so with greater confidence and become a better informed client.