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.