As has been discussed in prior postings, the Trademark Trial and Appeal Board’s rules for U.S. Trademark Opposition and U.S. Trademark Cancellation proceedings are contained in the Trademark Board Manual of Procedure (“TBMP”) an over 1,000 page “how-to” guide of handling inter-partes matters before the Board.

The purpose of the TBMP is to provide trademark attorneys with basic information generally useful for litigating cases before the Trademark Office. The second edition of the TBMP last was revised in 2004.  The current third edition was revised and published by the Trademark Office in May 2011.  The Third Edition highlights several new development practices, including the following changes designed to make the trademark opposition and trademark cancellation process be easier on litigants and to encourage early settlement:

  • Mandatory discovery conferences to discuss settlement and claims and defenses
  • Disclosures of initial witnesses, experts, and other pretrial matters
  • Emphasis on Accelerated Case Resolution (ACR”); and
  • Efficiencies such as a shift from paper to electronic filings

The manual is devoted primarily to opposition and cancellation proceedings, since they are the two most common types of cases before the Trademark Trial and Appeal Board. It also includes additional information on interference proceedings, concurrent use proceedings, and ex parte appeals to the Board.  The third edition also incorporates all statutory changes, including changes to the Trademark Rules of Practice and Federal Rules of Civil Procedure.  In keeping with the Trademark Board’s emphasis on and innovations in electronic initiatives, the new third edition is available online on the USPTO website in a searchable format.

The Board welcomes suggestions for improving the content of the Manual and making its understanding and application helpful to all U.S. trademark lawyers.

 

Many companies facing a trademark opposition are unfamiliar with the ramifications of a notice of opposition and how it could impact their business.  Here are some things to remember when your trademark application is opposed: 

Trademark Oppositions are Civil Litigation

An opposition proceeding is a form of civil litigation that is heard before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office.  It has a complaint (in the form of Notice of Opposition), discovery phase (allowing the parties to file discovery items such as interrogatories, request for production of documents and to take depositions), and a trial phase, assuming the case is not settled.  There is also the opportunity to prepare and file motions and legal briefs in support of your position.

Trademark Oppositions are Governed By Specific Rules

The rules governing trademark opposition procedures are found in the Trademark Board Manual of Procedure also known as the “TBMP.”  The TBMP comprises 12 chapters that explain in specific detail the procedural and substantive requirements of a trademark opposition rules that must be followed.  Chapters include topics such as Pleadings, Discovery, Stipulations and Motions, and Settlement.

The Failure to Follow the Rules Can Be Fatal to Your Case

The Trademark Trial and Appeal Board requires strict adherence to each and every rule. The failure to follow the rules can result in several unwanted consequences, such as a motion for default, a motion to dismiss, or motion for judgment.  Quite often, these dispositive motions are due to a failure of one party to meet deadlines or other procedural requirements necessary to maintain their case.

The best practice is always to consult with a qualified trademark opposition attorney early in the proceedings to avoid risk to your trademarks or business.

 

 

As a trademark opposition attorney, I have first-hand knowledge of trademark bullying tactics that are designed to outspend and harass small business trademark applicants into abandoning their trademark application. The practice also spills into federal court actions for trademark infringement, cyberquatting, and other related matters.  This phenonemnon is very real.

As part of the Trademark Technical and Conforming Amendment Act of 2010, Congress instructed the United States Patent and Trademark Office to take the unusual step to address this issue by sending out a trademark bullying survey to trademark attorneys, small business owners, and interested parties to determine whether they had been the victims of trademark bullying. The survey invited respondents to share their experiences with trademark litigation tactics, “especially those that may involve an attempt to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to trademark owners.”  Solicited examples of trademark litigation bullying tactics included abuses of:

  • trademark cease and desist letters
  • domain name cease and desist letters
  • trademark opposition proceedings
  • trademark cancellation proceedings

and other trademark-related matters that have adversely impacted the respondents, their clients, and/or business.

The resulting Report to Congress, Trademark Litigation Tactics and Federal Government Services to Protect Trademark and Prevent Counterfeiting, included the following highlights:

  • approximately 60% of respondents viewed trademark bullying as a real problem
  • a majority of respondents opined that Congress has a responsibility to discourage or prevent aggressive trademark litigation tactics
  • many respondents encouraged the Trademark Trial and Appeal Board to amend its rules to create and enforce tough sanctions against such behavior in trademark opposition proceedings

The subject of abusive trademark lawyer and litigation tactics subject is worthy of further discussion and commentary as there exist several strategies to combat such actions by deep-pocketed trademark litigants. If you or your company is involved in a trademark opposition or other trademark dispute, it is recommended that you speak with a qualified trademark attorney to determine how to best approach the case in a cost-effective and vigilant manner.

Domain name infringement is one of the greatest threats that trademark owners face in protecting their valuable brand names. Why? Because registering a domain name is relatively fast and inexpensive, giving unscrupulous individuals ample opportunity to abuse the legitimate rights of trademark owners. 

Domain name disputes arise from two common types of infringing activities:

  • Cybersquatting- the act of using or registering all or part of another’s trademark or brand name in an attempt to profit from such registration
  • Typosquatting- the act of registering variations of another’s trademarks or brand names that contain typos or misspellings that are confusingly similar to the protected trademark (an example would be “googel.com” for the well-known search engine company).

Fortunately, the Uniform Dispute Resolution Policy (UDRP), developed by ICANN, the governing body for domain names, is a relatively fast and economical means for a trademark owner to contest disputed domain registrations that result from cybersquatting or typosquatting violations.

According to the World Intellectual Property Organization (WIPO), trademark owners filed 2,696 complaints before the WIPO domain name arbitration forum in 2010 alone.  The National Arbitration Forum, another ICANN approved domain name dispute forum, reported approximately 1,800 complaints filed in the same year. 

To prevail in a domain name arbitration, a complainant must prove by a preponderance of the evidence the following:

  • Respondent’s domain name is confusingly similar to the complainant’s trademark;
  • Respondent does not have any rights or legitimate interests in the domain name
  • Respondent registered and used the domain name in bad-faith

Each of the above elements of proof rests on sound legal precedent and arguments.  As such, it is always advisable to speak with a domain name lawyer to further discuss your domain name rights and options.

 

Have you been served with a Notice of Opposition to your trademark application?  

If so, yours is one of the hundreds of trademark opposition proceedings that are filed against trademark applicants every year.

Notice of Opposition: Important Steps

Always consider taking the following steps upon receiving a Notice of Opposition.

1.  Contact a Trademark Opposition Lawyer

Trademark Oppositions are exclusively heard before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office.  

The rules that govern trademark opposition proceedings may be found in the Trademark Board Manual of Procedure, a publication of the United States Patent and Trademark Office. 

 Given the complexity of such proceedings, it is always advisable to speak with a qualified trademark opposition attorney immediately.  

The failure to answer a Notice of Opposition within 40 days can result in a default judgment against the trademark owner, with the trademark opposition being sustained and your trademark application being refused registration.

2.  Educate Yourself

Defending a trademark opposition can be costly.  

This is because trademark oppositions, like other civil litigation matters, are contested proceedings between a plaintiff and defendant.  

You can expect the trademark opposition to have three distinct phases, each with its specific evidentiary rules and requirements: (a) pleadings (b) discovery; and (c) trial.  

Each phase involves a great deal of time and expense, and depending on the nature of the proceeding, can also involve the use of expert testimony. 

Be sure to have full familiarity with what may be expected of you as a trademark opposition litigant.

3.  Discuss Your Options

Always have your trademark lawyer discuss the various options that may be available to you at the beginning of the trademark opposition case.  

This may include engaging the Opposer in settlement discussions, or submitting the case to Alternative Dispute Resolution arbitration under the auspices of the Trademark Trial and Appeal Board.  

In certain instances, neither of the above options may be the right one, and fully litigating the case on the merits may be necessary to protect your valuable trademark rights.

To discuss your trademark opposition matter, feel free to contact me now and I’ll get back to you soon.

As a Connecticut trademark attorney, I often advise clients on the trademark registration process and what legal rights a United States Trademark registration grants.  Since there are many misunderstandings about trademark law, it is worthwhile to briefly discuss some best practices on how to protect trademarks and brand names here:

1.   Begin with a Full Trademark Search

A trademark search generally consists of a search of the United States Patent and Trademark Office records, state trademark office records, and common law listings to determine the availability for registration and use of a proposed trademark in interstate commerce.  The trademark search looks for identical trademarks as well as trademarks that may be “confusingly similar” to the trademark that is being considered for adoption by the searching party. 

2.   Have a Trademark Lawyer Provide a Written Legal Opinion

Analyzing the results of a trademark search requires experience and a detailed knowledge of applicable trademark law.  After the full trademark search is conducted, a qualified trademark lawyer should provide a written opinion as to the availability for registration and use of the trademark on the proposed goods and services.  The opinion should list all of the trademark search results of interest that are relevant to a determination of clearing the desired trademark for registration and use. 

3.  Prepare and File a Trademark Application

Once the trademark lawyer provides a favorable trademark search opinion, he or she should promptly prepare and file a trademark application with the U.S. Patent and Trademark Office.  Trademark applications can either be filed based on (a) existing use in commerce or (b) an intent to use in commerce if the applicant has not yet commenced use of the trademark on its products or services.  Once the trademark application is filed, it is assigned to an examining attorney in the Trademark Office to review the application for procedural and substantive requirements, and to deterimine whether the application will be either accepted or initially refused due to a likelihood of confusion with previously registered trademarks or for other reasons.

By following the above approach to trademark clearance and protection, companies can avoid many of the major risks and pitfalls associated with this nuanced area of trademark law.

 

 



Recent Notice of Opposition proceedings or extensions of time that have been filed in the past week include the following:

Opposition No. 91203542: Urban Outfitters v. Urban Outlet

Here, the hip urban retailer seeks to prevent registration of the trademark Urban Outlet, by the company of the same name.  The opposition alleges that the applicant’s URBAN OUTLET mark for retail discount store services is likely to cause confusion with Opposer’s well-known URBAN OUTFITTERS and URBAN RENEWAL marks for a wide variety of fashion and accessories goods and services.  While it is doubtful that Urban Outfitters wishes to have any other third-party “urban”-ites on the block, it would be interesting to see the number of third-party registrations and common law uses of “Urban” associated with fashion merchandising and accessories. 

Opposition No. 91203544 Bear Republic Brewing Co., Inc. v. Race Cat GmbH

Opposer is the owner of mutlple trademark registrations for RACER 5 and RACER 5 INDIA PALE ALE for beers and ales and is opposing Applicant’s RACE CAT mark for numerous alcoholic and non-alcoholic beverages, including beers.  The alleged grounds is confusing similarity pursuant to Section 2(d) of the Trademark Act.  Seems like the Applicant has many options available to it, including either fighting the opposition or seeking to narrow its identification of goods.

Extensions of Time:

Anheuser Busch LLC /Julie Ann Associates LLC  Proceeding No. 85272723

This case presents yet another example of a large company considering whether to file an opposition against anything that contains a prefix or suffix of its well-known registered trademarks (think “Mac” for McDonald’s®, or “Snap” for Kellogg’s®).  Here, Anheuser Busch, the owners of the famous Budweiser® beer, apparently does not like the fact that Applicant has filed for the mark PLAYBUD for a magazine featuring hemp and cannabis. Question: just which connotation of “bud” does Anheuser Busch object to?  Best bet is the beer.

McDonald’s Corporation /American Mastertech Scientific -Proceeding No. 85320201

McDonald’s has filed an extension of time to oppose the Applicant’s mark for McDONALD’S GRAM STAIN KIT for diagnostic preparations for medical use.  Does McDonald’s corporation have a case? Probably not, unless it can show that diagnostic preparations are now considered a form of food or beverages fit for human consumption.

McDonald’s Corporation v. MacSports Inc. – Proceeding No. 85087738

Here, McDonald’s wants time to consider whether to file a trademark opposition against MacSports for its application of MAC PATIO for patio furniture.  MacSports seems to have some good possible arguments at its disposal.

Additional extensions of time filed in the past week include:

American Heart Association/Henry Clark Stroke Foundation – Proceeding No. 85349971

  • Trademark: STROKE NO JOKE

Wineslingr LLC/Russell D. Kane – Proceeding No. 85351159

  • Trademark: WINESLINGER

Shakelee Corporation/Lalo 4074 LLC – Proceeding No. 85365644

  • Trademark: CINCH

Johnson & Johnson/AFN Broker LLC – Proceeding No. 85401549

  • Trademark: FAIR AND CLEAR

 

I am a trademark opposition lawyer that charges a flat-fee for my services.  Charging one, flat fee for a trademark opposition case is advantageous to my clients for the following reasons:

  • the total cost to the client is fixed and predictable
  • the fee agreement between the client and me is transparent and unambiguous
  • there are no surprises when the bill arrives

Conversely, billing the client hourly for trademark attorney services creates a host of problems for the client.  Such challenges include the following issues that may arise during the course of representing a company in a trademark opposition case:

  • open-ended hourly billing
  • potential to create more billable hours within the case
  • lack of incentives for early case settlement
  • potential for fee disputes

In my opinion, it is always in the trademark owner’s best interest to negotiate a flat-fee agreement for representing them in trademark opposition cases before the Trademark Trial and Appeal Board.

 

 

 

 

As a trademark lawyer that handles trademark opposition and trademark cancellation cases, I have a simple philosophy in dealing with the business and legal challenges that my clients face as a result of being involved in litigation proceedings before the Trademark Trial and Appeal Board.

1.  Listen to the Client

It is often difficult for people to truly listen to the other person while having a conversation.  This is doubly true when it comes to a trademark attorney listening to his or her client.  What are the client’s needs?  What is their preferred outcome?  What are their cost constraints?  These and many other questions need to be answered prior to engaging in the attorney/client relationship.

2.  Be Respectful of Your Client’s Money

Many trademark attorneys operate under a scorched-earth policy, where they believe that the best way to service their client’s needs is to be highly aggressive, both in dealing with opposing counsel and the amount of paper that they generate as part of the case.  It it my experience that part of this aggression is economic in nature:  if a trademark attorney is charging hourly for his services, then it is in his or her interest to generate as many billable hours as possible as part of the trademark opposition case.  Yes, you heard me right!  Is this the rule?  Certalnly not.  But you should be mindful of hiring attorneys who will not discuss with you a flat-fee option or at the very least, a cap on their fees for the case.

3. Be Respectful of Opposing Counsel

Having a pleasant and respectul working relationship with the attorney for the other side is essential to best serving the needs of your client. Why?  Because by doing so, this often saves the client money in attorney’s fees.  If I am able to cooperate with opposing counsel during the case, many potential disputes regarding the discovery process can be avoided, leading to less time (and billable hours) spent on fighting and more time on seeking an amicable resolution that is in the best interests of my client.

There are many fine trademark attorneys who adhere to the above tenets of professional collegiality.  They are the ones who are a pleasure to deal with and who quite often best serve the interests of their clients.

 

In discussing how a trademark opposition works, it is helpful to go over the basics of what a trademark opposition is, and what to expect as the case proceeds.

A trademark opposition is when one party elects to oppose the existing trademark application of another party due to one of several grounds, such as the pending trademark application is confusingly similar to the complaining party’s existing trademark registration.  The complainant in a trademark opposition is called the Opposer.  The trademark application owner whose trademark application is being opposed is called the Applicant.

Trademark Oppositions are filed and heard before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office. Like other cases in civil courts throughout the country, a trademark opposition has several procedural and substantive phases to the case, including:

  • Complaint and Answer
  • Discovery (including interrogatories, request for production of documents, request for admissions, and depositions)
  • Trial Testimony and Submissions (including Notice or Reliance)

In addition to the above, a trademark opposition can involve several motions of law that either trademark opposition attorney may file on behalf of his/her client, such as a motion to dismiss, motion to compel, or motion for summary judgment.  What is the longest phase of a trademark opposition case that has the potential to be the most expensive?  In most instances, the discovery phase is what takes the most time and the costs the most in terms of attorney’s fees.

In subsequent postings, I will discuss how you can possibly save money in trademark opposition proceedings through effective dispute resolution techniques.