Trademark opposition proceedings are civil litigations before the U.S. Trademark Trial and Appeal Board (TTAB).  Companies that wish to enforce their trademark rights through TTAB proceedings should take into account the following pre-filing considerations:

  1.  Standing. Standing is a procedural requirement for all potential opposers.  To establish standing to bring or maintain a trademark opposition, the Opposer must allege a real interest in the outcome of the proceeding together with a claim that it will be damaged by the Applicant’s mark.
  2.   Priority.  In cases where the Opposer is claiming that the offending application will cause a likelihood of confusion with the Opposer’s trademark, the Opposer must allege that is has senior rights. This may be accomplished by showing ownership of a prior U.S. trademark registration or by alleging common law rights that predate the applicant’s first use date or filing date.
  3.  Ownership.  The Opposer should make sure that it is the owner of the senior trademark and file the opposition under its corporate name.   If a related company or licensee is using the trademark, a review of all agreements should be made prior to filing a notice of opposition to ensure rightful ownership and proper chain of title.   Licensees generally do not have standing to bring a trademark opposition proceeding unless specifically governed by a trademark license agreement.
  4.   Jurisdiction.  The TTAB has jurisdiction over the right to register a trademark only.   Even if the Opposer prevails, the TTAB does not have any authority to order the Applicant to cease use of its trademark.  Nor does it have the right to award monetary damages or attorney’s fees.  Only Article III courts such as U.S. District Court has the jurisdiction to enjoin a party’s right to use its trademark in commerce or to award monetary relief to the prevailing party.
  5.  Proper use.  Under U.S. law, trademark rights are based on use.  The fact that an Opposer is the owner of a preexisting trademark registration does not mean that it automatically has superior rights to those of the Applicant.  The Applicant has the right to seek evidence that the Opposer is currently using Opposer’s trademark on all of the goods and services set forth in its pleaded trademark registration.  If the Opposer had never commence use of its mark on some of the goods, or if it has abandoned use on some or all of the goods, then the Opposer’s pleaded registrations are subject to cancellation.
  6.  Likelihood of confusion. The test for whether a trademark applicant’s mark is confusingly similar to a senior owner’s mark has been set forth is a 13-part test known as the Dupont  While no one factor is dispositive, some of the key factors that the TTAB looks at to determine if a likelihood of confusion may exist are (a) similarity of the marks; (b) similarity of the goods or services; and (c) similarity of the parties’ trade channels.

The above checklist is not inclusive.   Other legal and factual considerations should be weighed prior to bringing a notice of opposition.  Such factors include a discussion of preferred business goals, and how to achieve them without the need of a full-trial on the merits.   Often, these goals can be achieved with the assistance of an experienced trademark opposition attorney.

Editor’s Note:   To discuss your trademark opposition or brand enforcement strategy, please contact James Hastings.

More than 5,000 trademark oppositions are filed every year.  One of the grounds for bringing a trademark opposition is that the application is likely to cause confusion with the Opposer’s preexisting trademark.  Yet many trademark opposers are unsuccessful and have their case dismissed.  So prior to filing a notice of opposition, it is advisable to be aware of common mistakes that beset litigants before the US Trademark Trial and Appeal Board.

Mistake #1:  Failure to know TTAB rules.   Procedures for trademark opposition proceedings are set forth in the Trademark Board Manual of Procedure (TBMP).  The failure to follow the strict rules of the TTAB that are contained in the TBMP could result in dismissal of a case or otherwise severely prejudice a litigant’s rights.

Mistake #2.   Failure to assess the case.   Many trademark owners engage in robust trademark monitoring.  This includes filing numerous trademark oppositions against trademark applications deemed to be confusingly similar.  While this tactic can prove successful in certain cases, it could be disastrous where the Opposer fails to adequately research the law and how it may apply to the specific facts of the case.  The lesson here is to assess your strengths and weaknesses before filing a notice of opposition; not after.  No two cases are alike.

Mistake #3.   Overconfidence.   This error in strategic judgment has gotten many a trademark opposer in trouble.   Should the Applicant vigorously defend the opposition and expose fatal weaknesses in the Opposer’s case, the Opposer may be faced with the undesirable choice of either proceeding with the expense of the litigation, or, even worse, face a negative ruling.  This could result in a weakening of the brand owner’s future brand enforcement efforts or even cancellation of its own trademark registrations.

Trademark Management Recommendations:   Brand owners should create and implement a written trademark monitoring and enforcement plan.   Factors to consider are (1) what trademarks should be monitored and enforced; and (2) under what circumstances should third-party applications be opposed.   By creating a written brand enforcement process and updating it once a year, companies can help mitigate their risks and strengthen their trademark portfolios. 

Not all trademark opposition proceedings proceed to a final decision.  In fact, the vast majority of trademark opposition disputes are resolved between the parties or involve trademark mediation.  Estimates are that over 90% of cases before the U.S. Trademark Trial and Appeal Board amicably settled before trial.

Short of the cost and expense of a full trial on the merits, parties may elect to do the following:

  1.   Withdraw the Application.    The Opposer may request that the Applicant withdraw its trademark application in consideration of a consent agreement that the Applicant may use its mark in commerce under well-defined circumstances.
  2.   Narrow the Identification of Goods.    A frequently invoked compromise is for the Applicant to agree to delete certain goods or services contained in its application.  The Applicant would then be permitted to proceed with its registration based on the narrowed identification of goods.  This is so as to avoid a potential likelihood of confusion with the Opposer’s goods and services.
  3.  Trademark assignment and license back.    Under this scenario, the Applicant would assign its ownership in and to its application and eventual registration to the Opposer.  The Opposer would then license-back the mark to the former Applicant for a limited-use purpose under the supervision and control of the Opposer.  This strategy is used in limited circumstances.
  4.  Withdrawal and agreement not to use.   This is a last-resort strategy for an Applicant.  By signing an Agreement not to use the mark in commerce, it generally gives the Opposer contractual rights to police the Applicant’s use of marks in the future that the Opposer may deem to be confusingly similar to its own.    If the Applicant has decided to make the business decision to withdraw its application and not use the mark, it should avoid signing any other documents that would give the Opposer any future right to approve or disapprove new trademarks of the Applicant.
  5.   Trademark Mediation.   Mediation is an effective means for the parties to come together to discuss their dispute and narrow their differences between a qualified trademark mediator.   The mediation may be either binding or non-binding at the election of the parties.

Editor’s Note:  The author is an approved mediator with the International Trademark Association Panel of Trademark Mediators, a professional group that is compromised of approximately 175 mediators worldwide.

Trademark cancellation proceedings based on abandonment continue to present challenges to trademark registrants.   In the latest case before the US Trademark Trial and Appeal Board, however, the registrant’s trademark registration was spared.

In AD5 Inc. v. Jennifer M. Estes dba #SELFiE T’s, the Petitioner sought to cancel Reg. No. 4642072 of the Registrants #SELFIE design mark (in a reverse mirror image) for a wide variety of apparel items in International Class 25.  Petitioner had alleged that Registrant had abandoned the trademark.  The relevant statute to prove abandonment is Section 45 of the Trademark Act:

Section 45 of the Trademark Act provides that a mark shall be abandoned when its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances.

The party seeking cancellation bears the burden of proof to establish abandonment by a preponderance of the evidence.  If the Petitioner can show nonuse of the Registrant’s mark for at least three consecutive years, the burden shifts to the registrant trademark owner to show that it was using the mark or that it had an objective intent to resume use.
Here, although Petitioner alleged that Registrant was not using the mark for at least three consecutive years, the Registrant denied the allegation, citing evidence that she maintained her website for the products bearing the  mark and donated goods to potential marketplace customers.  The Board noted that nonuse of a mark due to lack of demand coupled with on-going marketing efforts may not constitute trademark abandonment.  In the end, Petitioner could not overcome Registrant’s evidence of continued marketplace attempts to sell the items.  This case stands as a reminder that the burden of proof always lies with a petitioner to cancel a trademark registration on abandonment grounds.
In addition to not proving its abandonment claim, the Petitioner was unable to establish its standing to bring the petition for cancellation.  Therefore, the Board’s dismissal of the petition was technically due to lack of standing.  The Board nonetheless proceeded to evaluate the merits of Petitioner’s abandonment claim, stating that Petitioner failed to establish its burden of proof.
Note:  The author was a recent CLE Faculty Member for a training webinar on trademark abandonment sponsored by Strafford, a leading educator of attorneys.

A trademark opposition involving beverage trademarks was the subject of our most recent post.  Now, we review a trademark cancellation dispute between two beverage trademark owners.  In both proceedings, the grounds were a likelihood of confusion pursuant to Section 2(d) of the Trademark Act.

In Rebel Wine Co. LLC v. Piney River Brewing Co., Rebel Wine petitioned to cancel Piney River’s Registration No. 4597351 of the mark MASKED BANDIT for beer and brewed malt based alcoholic beverages in the nature of beer.   Rebel Wine plead ownership of Registration Nos. 33119263 and 39743404 both for the mark BANDIT for wine and alcoholic beverages except beers.  The U.S. Trademark Trial and Appeal Board found that Petitioner had priority based on its earlier registrations.

In analyzing the likelihood of confusion between the beverage trademarks, the Board reiterated the well-known rule that two key considerations are the similarities between the marks and the relatedness of the goods.  Considering the marks in their entireties, it found that MASKED BANDIT and BANDIT are similar, therefore weighing in favor of likely confusion.   With regard to the relatedness of goods factor, the proper test is whether consumers would tend to believe that the parties’ respective products emanate from the same source.  Here, the Board observed that both parties had beer and/or wine in the goods covered by its registrations.  The Board also noted that it often concludes that “beer” and “wine” are related goods for purposes of likelihood of confusion.  In the end, it opined that in this proceeding was no different and found that the parties’ respective goods were related.   It also found that the trade channels of the parties and purchasing conditions were similar.  As a result of the totality of the evidence, the Board granted the petition based on a likelihood of confusion and Piney River’s trademark registration for MASKED BANDIT was cancelled.

Practice Note:  While the Board had indicated that each proceeding is different, when it comes to the similarity between wine and beer, it almost inevitably concludes that the two goods are related for purposes of likelihood of confusion.  This is despite the fact that here, Respondent introduced 237 pairs of third-party registrations of the same or very similar marks for wine and beer, respectively, owned by different companies.

For purposes of likelihood of confusion, not all beverage trademarks are created equal.

In Patrón Spirits International AG v. Conyngham Brewing Company, the Applicant sought registration of the mark PIRATE PISS for “beer, ale, and lager” in International Class 32.   Opposer Patron had opposed the application based on its ownership of the previously registered marks PYRAT and PYRAT RUM for distilled spirits and rum in International Class 32.  Patron had disclaimed exclusive rights in and to the term “rum” as uses in the latter mark separate and apart from the mark as shown.  In support of its case, Patron had submitted its registrations, and various internet printouts showing various spellings of the term “pirate.”  In addition, it introduced 13 third-party registrations showing marks where the goods contained both beer and rum.  However, of these, only 6 were use-based registrations, prompting the Board to observe:

Opposer’s submission of the six relevant third-party registrations is not very convincing for purposes of showing that beer and rum are sufficiently related that consumers expect them to emanate from the same source.

There is no per se rule that all beverages are related for purposes of likelihood of confusion.   The Board noted that while beer and wine are often found to be related in trademark oppositions involving beverages, each case must be weighed by its own facts and evidence.   Here, the Board proceeded to conclude that Opposer could not evade its burden of proving relatedness of the goods by “bootstrapping upon previous factual findings made in other decisions on different records.”   In the end, it believed that the both the quality and quantity of Opposer’s evidence was insufficient to prove that beer and rum are related goods for purposes of likelihood of confusion.  This factor, as well as the unique connotation and strong commercial impression of Applicant’s mark helped to distinguish it from Opposer’s mark.  Accordingly, the Board dismissed the Opposition and ruled in favor of Applicant.

Practice Tip:  In proving the relatedness of beverage trademarks, an Opposer should cite to as many third-party use based registrations as possible and further present probative evidence that the related goods in question are in use by the same source.  Note, however, that if the marks being compared are identical or highly similar, the degree of relatedness required between the respective goods need not be as great.

We recently spoke with Thomas Huthwaite, senior associate at Baldwins, to discuss New Zealand trademark protection issues.   Thomas has been named as “one to watch’” by the Legal 500 Asia-Pacific.

Please tell us a little about your trademark and brand protection practice.

I am a New Zealand barrister and solicitor, and registered Patent Attorney.  Since joining Baldwins Intellectual Property in 2010, I have been involved in litigation and dispute resolution work for a number of high profile international clients, including US-based companies Harley-Davidson Motor Corporation, Motorola, and Pepsico.  Some of my work has resulted in leading New Zealand trade marks jurisprudence, including:

  • Crocodile International Pte Ltd v Lacoste [2017] NZSC 14, the leading case on “non-use” of a trade mark
  • Zoggs International Limited v Sexwax Incorporated [2013] NZHC 1494 and Sexwax Incorporated v Zoggs International Ltd [2014] NZCA 311, leading cases on “bad faith” and “reputation” respectively

What should U.S. companies be doing to protect their valuable brand names in New Zealand? 

Early clearance and registration are certainly recommended as first steps for any brand owner.  New trade mark applications are published for potential opposition purposes at the end of each month, and opposition remains open for three months.  Monitoring for new applications and published marks is recommended in order to ensure that potential oppositions are identified early.

Marketplace, company name registration, and/or domain name registration searches are also recommended for certain industries, in order to identify potential or proposed use.  Customs notices are also recommended for those concerned about counterfeit goods, and can be a useful means of monitoring both imported and exported goods. Most disputes in New Zealand arise from the adoption of confusingly similar marks by different parties (rather than the misappropriation of marks, or adoption of identical marks).  Early identification and potential challenge increase the risks of successfully preventing the use of confusingly similar marks.  Early intervention also reduces the risk of dilution, damage, and/or customer confusion.

What is required for a company to be eligible to file a trademark opposition in New Zealand? 

 Broadly speaking, there are four types of trade mark proceedings in New Zealand: 

  • Opposition (before the Commissioner of Trade Marks, seeking to prevent registration of an application);
  • Invalidity (before the Commissioner of Trade Marks or the High Court, seeking to invalidate an already-registered mark);
  • Revocation (before the Commissioner of Trade Marks or the High Court, seeking to remove a mark for non-use); and
  • Infringement (in the High Court, requiring a registered trade mark).

There is no locus standi or other standing requirement for filing a trade mark opposition in New Zealand.  Potential opponents are encouraged to either oppose or seek an extension of time for opposing within the initial 3 month deadline, as it is much easier to oppose registration than to apply to invalidate an already-registered mark.  Potential grounds for opposing include that the mark applied for is likely to deceive or confuse consumers (for example, on the basis of the opponent’s prior use or registration of a similar mark), that there has been a false claim to ownership (including no intention to use the mark as applied for), that the application was made in bad faith, and/or that the application is contrary to law (including copyright law, consumer law, or common law).

What are some of the risks to international companies who decide not to file a trademark opposition? 

Not filing a trade mark opposition can be hugely detrimental, depending on the circumstances.  It may become impossible for the potential opponent to later challenge a registered mark (or its use), particularly if the owner of the registration has used the mark in New Zealand and established a reputation in the mark for itself.

New Zealand cases will typically be decided on a priority basis, meaning first to use or register should prevail.  However, it can be difficult to obtain evidence of use, which must have been genuine, within New Zealand, and may need to surpass mere “use” to establish a “reputation” or “goodwill” (depending on the type of proceeding or challenge).  This can also become clouded by any subsequent use of the same or a confusingly similar mark by a different entity. 

Early registration is therefore always desirable and recommended.  This is especially true given that trade mark infringement proceedings require a trade mark registration, and given that use of one’s trade mark registration provides an absolute defense to infringement.

If opposition proceedings are not filed, invalidity and revocation proceedings are still available.  However, as mentioned above, the burden in such cases does tend to become heavier for the challenger.  In the meantime, the challenger may also be prevented from freely using its mark in New Zealand, given the potential threat of infringement.  In-keeping with the general principles of priority, honest prior or concurrent use can provide a defense to infringement.

Editor’s note:   U.S. or international companies interested in speaking with Thomas about New Zealand trademark protection strategies may contact him directly via email or Linkedin.

While seeking to cancel a trademark registration on the grounds that is generic is often difficult to prove, it is not impossible.  Therefore, it is always prudent to be familiar with applicable rules and case law.

A generic term is the common descriptive term of a class of goods or services.   Generic terms can never function as a trademark since they are incapable of indicating a single source of the goods or services.   Public policy also prohibits the registration of generic terms since no one party should be able to appropriate such a term to the exclusion of others.   If a party claims that an existing registered trademark is generic, is can seek to cancel the trademark registration at any time.   Trademarks that were not generic at the time of registration can also be cancelled if they have subsequently become generic.  This is also known as genericide.   Infamous examples of genericide include the previously registered trademarks CELLOPHANE and ESCALATOR.

Whether a term is generic involves a tw0-part analysis, known as the Marvin Ginn test:  First, what is the genus of goods or services at issue? Second, is the term sought to be registered … understood by the relevant public primarily to refer to that genus of goods or services?

The first part of the Marvin Ginn test involves an examination of the identification of goods or services contained in the trademark registration.  The second part of the test of what constitutes the relevant consuming public is made in the context of the goods or services and the type of consumers who would fall under typical users.    Recent TTAB decisions have held that the absence of third-party evidence of use of the term is not by itself fatal to a finding of genericness. See In re Mecca Grade Growers, LLC, 125 USPQ2d 1950, 1958 (TTAB 2018).

Tips for Cancellation.  If you are considering petitioning to cancel a trademark registration on the grounds of genericness, it is important to consider the following:

  1.   Identification of goods.  If the identification of goods or services set forth in the registration are indicative of the genus of the goods, than a finding of genericness is more likely.  A simple example of this is SOURDOUGH for “bread and rolls.”   Conversely,  a registered trademark of “SOURDOUGH” for laptop computers will never be found to be generic of computers, since the term “sourdough” is not the genus of computers.
  2.   Internet use.    Proof of how the term is used, including dictionary definitions and third-party use, is probative of whether it is generic of the specific goods and services set forth in the registration.  A party seeking to cancel a registration should seek to gather and preserve this evidence prior to filing the petition for cancellation.
  3.  Registrant’s use.   If the registrant itself uses the mark in a generic manner to describe its goods or services offered under the term, than this is strong evidence that it is generic and should be cancelled.  To avoid cancellation, it is advisable that registrants educate their marketing department, vendors, and members of the consuming public that the mark is a registered trademark.  All marketing and advertising copy, including social media posts and campaigns, should be reviewed and monitored to ensure that brand guidelines are followed.

To discuss a trademark cancellation case on the grounds of the mark being generic, please contact the author.

We recently spoke with Blake Knowles, partner at Cullen’s, to discuss Australia trademark protection issues.

1.  Please tell us a little about your background and brand protection experience.

Since joining Cullens, I have been responsible for managing, protecting and enforcing the trademark portfolios of several successful and well known Australian and overseas companies. I regularly prosecute trademark applications, represent clients in trademark oppositions and removal proceedings, and assist with enforcement of trademarks and resolution of disputes.

I was previously employed for ten years in the Australian Trade Marks Office. I am a former Senior Examiner, Principal Examiner and Examination Team Leader. During my time as an Examiner, I assessed several thousand trademark applications. As an Examination Team Leader, I was responsible for the management and mentoring of twelve other trademark examiners.

At the time I left the Australian Trade Marks Office, I was the Assistant Director of Trade Marks Hearings & Oppositions. In this role, I worked on a range of trademark legal and policy issues and was also responsible for authoring significant parts of the Trade Mark Office Manual of Practice and Procedure as well as creating training modules for trade mark examiners.

2.  What should U.S. companies be doing to protect their valuable brand names in Australia?  

Fortunately in Australia it is rare for applications to be filed in bad faith for the purposes of usurping a valuable overseas brand. Most disputes arise from adoption of similar marks by multiple parties.  The usual strategies for brand protection should be employed: i.e., registering early (claiming convention priority where possible from foreign applications), obtaining clearance searches prior to commencing use, and monitoring whether applications have been filed by other parties for key marks (or confusingly similar marks). Local distributors should also be tasked with watching the market and reporting any potential infringements early.

3.   What is required for a company to be eligible to file a trademark opposition in Australia? 

There is no standing requirement to file a trademark opposition in Australia or to commence a non-use removal proceeding.  It is much easier and more cost effective to prevent registration of a conflicting trade mark during the opposition period, compared to challenging the mark post-registration. However, the  Australia trademark opposition period is very short (2 months), and extensions are difficult to obtain.  Opponents who neither reside or carry on a business in Australia can be requested to pay security for costs at the commencement of opposition proceedings. If security is not paid, the Registrar has discretion to dismiss the opposition.  

4.   What are some risks to companies who decide not to file a trademark opposition?

The biggest risk is exclusion from the market or ring fencing.  Generally, if a company has first use and subsequent continuous use of a mark in Australia for particular goods or services, they should be able to defend an allegation of infringement by another registrant, and they will also have good prospects of obtaining their own registration on the basis of prior use (i.e. common law rights). However, their rights may be limited to the goods for which they have actually continuously used the mark in Australia, and this may inhibit expansion of activities in the Australian market.  Further, unless the company can afford to challenge a third party registration (which must done through the courts), they may need to co-exist with the other registrant in the market, which can create commercial difficulties and brand dilution.

5.   Do you have any other advice for companies who seek to obtain Australia trademark protection?

Many trademark applications are now filed in Australia via the Madrid Protocol. Such applications often designate many countries, and Australia is rarely the primary market of interest for such applicants. As such, an applicant who has filed via Madrid Protocol may be reluctant to incur costs defending an opposition in Australia. This can often result in an opponent winning by default, when a defense is not filed by the applicant.  Another useful strategy is to register key brands as domain names in the .com.au space. Other companies who may wish to adopt an identical brand to a foreign company may be discouraged if they cannot acquire the corresponding domain name in the .com.au space.

Editor’s Note:  U.S. or international companies interested in speaking with Blake about Australia trademark protection strategies may contact him directly via email or Linkedin.

The U.S. Trademark Trial and Appeal Board recently found no likelihood of confusion between two apparel marks.

In Manhattan International Trade, Inc. and Pure & Simple Concepts, Inc. v. Industrie IP Party, Limited, the Applicant sought to register the design mark FINEST QUALITY GARMENT MAKERS INDUSTRIE TURN OF THE CENTURY CLOTHING EST 1999 for clothing.   Upon viewing the logo, the largest portion of the mark is “Garment Makers Industrie.”  In its notice of opposition, Opposer alleged prior use and registration of a family of “INDUSTRY” marks for clothing, including INDUSTRY BY WORKWEAR, INDUSTRY UNION MADE PRODUCT, INDUSTRY GIRL, and additional marks for INDUSTRY with various design elements.  As in all trademark opposition cases involving likelihood of confusion, Opposer bore the burden of proof.

In analyzing the likelihood of confusion factors, the Board determined that the goods were, in part, identical.  Therefore, it also led to a presumption that the clothing products bearing the parties’ respective marks traveled in the same channels of trade.  The Board went on to state “the legal identity of the goods, close relationship of the goods and services, and their overlapping channels of trade and classes of purchasers not only weigh heavily in favor of finding a likelihood of confusion, but also reduce the degree of similarity between the marks necessary to find a likelihood of confusion.”  That being said, the Board concluded that in considering the parties’ marks in the entirety as to appearance, sound, connotation, and commercial impression, the “many differences between the marks outweigh their similarity.”

Moreover, the Board found that the Opposer’s INDUSTRY mark was weak, reasoning that:

the weaker an opposer’s mark, the closer an applicant’s mark can come without causing a likelihood of confusion and thereby invading what amounts to its comparatively narrower range of protection.

Based on the vast differences in the parties’ marks in their entireties, the weakness of the term “INDUSTRY” for clothing, and numerous references to third-party registrations containing the word “industry” in the record, the Board dismissed the opposition.

Practitioner’s Note:    The Board also ruled that the Opposer did not establish that it had a “family” of marks, as Opposer’s evidence as to consumer recognition and other factors necessary to establish a family of marks was weak.