A recent trademark opposition found no likelihood of confusion between two apparel trademarks.

In Garan Incorporated and Garan Services Corp. v. Manimal LLC , the Opposer is the owner of the well-known GARANIMAL brand of children’s clothing.  The applicant sought registration of the mark MANIMAL for a wide variety of men’s women’s and children’s clothing, including shirts and pants.  In its notice of trademark opposition, the Opposer relied on eight trademark registrations for its GARANIMAL Mark.

In determining whether a likelihood of confusion existed between the parties’ marks, the Board compared the Opposer’s mark most similar to Applicant’s mark for in part identical goods.  This was Registration No. 0954125 of the mark GARANIMAL for “children’s shirts and pants.”   If the opposition could not be sustained based on this mark (which as closest in its identification of goods to the Applicant’s goods), then the opposition would not be successful for any of the other registrations.  The Board proceeded with its analysis of the likelihood of confusion factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973)  (the “DuPont factors.”).  Two key considerations are the similarity of the marks and similarity of goods.  In this case, the Board analyzed the similarity of the marks last.

  1.  Similarity of the goods.  It is sufficient for finding a likelihood of confusion that Opposers establish that any item encompassed by the identification of goods within a particular class in the application and registration are related.  Since the Applicant’s goods encompassed in part Opposer’s goods, this factor weighs in favor of the Opposer.
  2.  Similarity of channels of trade and class of consumers.  Because the goods described in the application and Opposers’ registration both encompass shirts and pants, they are therefore legally identical in part.  In such situations, the Board presumes that the channels of trade and classes of purchasers are the same.  This factor weighs in favor of the Opposer.
  3.  Length of time without actual confusion.  Here, the absence of any reported actual confusion was not highly persuasive because the Applicant’s use of its mark was not appreciable and continuous.  Moreover, since the use was not in the same markets, there was not a reasonable opportunity for confusion to occur.
  4.  Strength of opposer’s mark.  The fifth DuPont factor enables Opposers to expand the scope of protection afforded its pleaded mark by adducing evidence of the fame of its mark.  This is shown by sales, advertising, and length of use.  The sixth factor, which is related, affords Applicant the opportunity to restrict the Opposer’s evidence of strength by adducing evidence of the number and nature of similar marks on similar goods that already exist.  To determine strength (the fifth factor), the Board looks at the mark’s inherent strength based on the nature if the mark itself, and its commercial strength, based on its marketplace recognition.  The latter is analyzed at the point that the Opposer’s mark is asserted in litigation to prevent the Applicant’s use.   Here, the Board concluded that the GARANIMAL Mark was inherently distinctive and original for purposes of strength.  It further concluded that commercial sales of goods and advertising under the mark have been substantial since it was first introduced in 1972.
  5.  Similarity or dissimilarity of the marks.   This factor looks at the similarity of both marks in terms of sight, sound, and commercial impression.  Where, as here, the goods are similar, then the degree of similarity between the marks need not be as great for purposes of finding a likelihood of confusion.  Here, the Board found that the Applicant’s mark was sufficiently different than the Opposer’s in part because the Opposer placed the letter “m” before “animal” to create a combination of “man” and “animal.”  This together with third-party registrations of marks for apparel that contained the word “animal” made the Board conclude that the marks were dissimilar.

Conclusion:   In trademark opposition proceedings, one DuPont factor may be dispositive and outweigh all others.  This is particularly true when the factor is the similarity of dissimilarity of the parties’ marks.  Using this reasoning, the Board therefore concluded that there was no likelihood of confusion between Applicant’s MANIMAL mark for clothing with Opposer’s GARANIMAL mark for clothing.

 Key takeaway:  It is important to note that the Board is limited to the identification of goods set forth in the applicant and the Opposer’s registration in its comparison of certain DuPont Factors.  These factors are  the similarity of the goods, similarity of the channels of trade, and class of consumers.  It may not consider how the parties actually use their goods in the marketplace in assessing these factors.  The similarity of the marks and similarity of the goods factors are often given added weight over all others.

TTAB filing statistics for 2019 reveal an increase in contested proceedings combined with greater delays in rendering final decisions.

The data, made available by the U.S. Trademark Trial and Appeal Board, reflects an increase in activity by litigants in both trademark opposition and trademark cancellation proceedings.   Our 2018 summary is found here.  Relevant 2019 data compiled by the U.S. Trademark Trial and Appeal Board is below.  The numbers in parentheses reflect the rate of change over fiscal year 2018.

Oppositions  (+7.1%)

  • 2019:  6,955
  • 2018:  6,496

Cancellations  (+7. 7%)

  • 2019:  2,426
  • 2018:  2,253

Extensions of time to oppose  (+6.7%)

  • 2019:  20,502
  • 2018:  19,208

Appeals (+3.4%)

  • 2019:  3,333
  • 2018:  3,223

The increase in filing activity across all proceeding types has apparently placed a greater burden on TTAB staff resources.  This fact combined with a greater number of motions being contested has lead to greater delays in rendering decisions:

Number of decisions on motions issued (-7.4%)

  • 2019:  1002
  • 2018:  1082

Average pendency of decision (+17%)

  • 2019:  11.5 weeks
  • 2018:  9.4 weeks

No. cases with motions awaiting decision  (+46.7%)

  • 2019:  242
  • 2018:  165

With an increase in filings and contested motion practice, an increase in the number of matters awaiting final decision is not surprising.   Yet, the Board has been able to decide more cases in 2019 as compared to 2018 results:

Cases decided (11.3%)

  • 2019:  651
  • 2018:  585

Most notably, the average pendency of trial decisions (from the time a case is ready for decision until a written decision is rendered) has experienced significant delays:

Pendency of Trial Decisions (+61%)

  • 2019:  15.3 weeks
  • 2018:  9.5 weeks

The number of appeals and trial proceedings awaiting decision have also increased:

Awaiting decision at end of period  (+58.5%)

  • 2019:  206
  • 2018:  130

Conclusion.  While the TTAB’s reported data is quite useful, it does not reflect the underlying causes for the delays in both motion and trial decisions.  It could be that an increased volume in initial filings combined with a greater tendency of parties to file contested motions is one of the causes.  This is particularly true in situations where parties cannot resolve discovery differences that result in increased (and sometimes unnecessary) motion practice.   Given current trends, it may be beneficial for both the Board and parties to reexamine how to improve participation in Accelerated Case Resolution (ACR) as well as other rules designed to streamline proceedings for greater efficiencies.

A trademark registration for nutritional supplements was recently cancelled by the U.S. Trademark Trial and Appeal Board.

Background.  The case, Food Global Innovation GP LLC v. Tuong Nguyen, sought cancellation of U.S. Reg. No. 4799824 of VITASTRONG and Design was nutritional and herbal supplements.  The grounds for cancellation were abandonment.   The Petitioner had filed trademark applications for VITAXTRONG, VX VITA XTRONG and Design, and VX VITA XTRONG.for dietary and nutritional supplements.  The Registrant’s trademark was cited against the Petitioner’s applications as a basis for refusal.   To remove the grounds for refusal, Petitioner moved to cancel the cited registrations.

A petitioner must establish the following elements to prevail on grounds of abandonment:  (1) standing; and (2) that the registrant has discontinued use of its marks on all of the registered goods for at least three consecutive years.  If the Petitioner is successful in establishing these initial proofs, then the  burden shifts to Registrant to show that it had a bona fide intention to resume use.    Alternatively, it could show excusable non-use.  Here, the evidence revealed that the Respondent redirected its vitastrong.com website to another website owned by it.  The redirected website did not  market, sell, or feature any products bearing the VITASTRONG mark.

In reviewing Respondent’s document production, the Board observed that Respondent’s lack of document production was lacking.  Specifically, Respondent did not produce any evidence of sales or transport of goods under the VITASTRONG and Design mark.  Nor did it produce documents showing the number of units sold or revenue received.  Respondent’s direct mail postcards that it produced that allegedly showed use of its VITASTRONG mark was deemed by the Board to be mere advertising.   It is a tenet of trademark law that mere advertising alone does not constitute trademark use.  Similarly, an internet page that shows products bearing the mark but do not have a means to order the product also do constitute evidence of use in commerce.

Holding.  As a result of Respondent’s lack of evidence that established its use of the VITASTRONG and Design mark, the Board cancelled its registration.

Trademark cancellation note:  This case is a reminder that not all advertising constitutes trademark use in commerce.  To prevent cancellation of a trademark on grounds of abandonment, It is a best practice to present evidence of sales, not mere advertising of products without a means to order.  Alternative grounds to petition to cancel a trademark may be found here.

A petition to cancel a trademark for abandonment is becoming more common.  This is due, in part, to the USPTO’s recent focus on clearing the registry of “deadwood” trademarks.

Trademark registrations that are subject to cancellation have one of two characteristics:

  • all of the goods or services have been abandoned;
  • some of the goods or services have been abandoned

Where all of the goods or services have been abandoned, the claim for relief is a total cancellation.  In instances where some of the goods or services are no longer in use, the claim if for partial cancellation.   A partial trademark cancellation can be for single-goods within a specific class.  It can also be brought against an entire class of goods.

Proof.   To establish a claim for trademark abandonment, the Petitioner must show that the registrant has discontinued use of the mark in connection with the associated goods or services.  The time period to establish a prima facie case is at least three-consecutive years of non-use.   If the petitioner is successful, the burden then shifts to the trademark registrant to show that it was had use of the mark during the time period.  In the alternative, the registrant could establish that it intended to resume use through justifiable non-use.

Standing.  A petitioner is also required to establish standing.  To do so, the petitioner must show that it has a legitimate interest in the outcome of the proceeding.  This means that it is not a mere intermeddler and has some sort of commercial interest to use the mark.

Why file?  Petitions to cancel based on abandonment may be filed at any time.  Often, a petition to cancel due to abandonment is filed because the attacked registration was cited as a basis to refuse a third-party’s later-filed application.  In such a case, the Applicant may file a petition to cancel to overcome the refusal to register.  If successful, the cited registration will be removed as a bar to the later-filed application.  A petition to cancel a trademark registration may also be brought by an Applicant as a counterclaim in a trademark opposition proceeding.  This strategy may be helpful where the opposer relies on several of its own registrations as grounds to oppose a third-party application.   When this occurs, the Applicant may seek discovery on whether the Opposer has indeed been using its pleaded marks on all of the goods set forth in the Opposers’ registrations.  If it appears that the Opposer has not been using its own marks on some of the goods cited in its pleaded registrations, a petition for partial cancellation may be proper.

If a petition for trademark cancellation has been filed against your company, it is important to determine your options.

A trademark cancellation proceeding for likelihood of confusion was recently decided by the Board.  It is a good lesson in evidentiary best practices.

In Marco Industries, Inc. v. Mark White, the Petitioner sought to cancel U.S. Reg. No. 4880452 of VITABUD GROW for fertilizers in International Class 1.   The petition for cancellation alleged that the Registrant’s mark creates a likelihood of confusion with Petitioner’s common law mark VITAGROW for plant foods.

In proving likelihood of confusion, the burden is on the Petitioner to first establish proprietary rights in its common law mark.  This may be shown through a prior registration, prior trademark use, or prior use as a trade name.  It may also be proven through prior use analogous to trademark use.   In this case, the Petitioner had to establish proprietary rights in its VITAGROW mark.  It also had to show that its mark is distinctive of its goods.   Distinctiveness can be either inherent or acquired.   The Petitioner would also have to show that its proprietary rights in and to its mark preceded the Registrant’s rights.

In this case, the Registrant’s application date operated as the priority date.  This was May 8, 2015.   The Petitioner introduced evidence of its use use of the VITA GROW Mark prior to 2014.  The evidence consisted of two pages of website archive page printouts from 2007 and 2008.   Despite this limited evidence, the Board held that the Respondent did not properly challenge the website printouts as hearsay.  Specifically, the Board held that it was incumbent on the Respondent to object to Petitioner’s evidence and it did not.  Since Petitioner’s evidence was submitted by Notice of Reliance, and not through testimony, the Respondent could have had the website pages stricken as impermissible hearsay.  Its failure to do so acted as as a waiver to any objection to the evidence.   Therefore, the website evidence of priority was admitted by the Board.  This procedural error proved fatal.

Attorney note:   Trial testimony in trademark opposition and cancellation cases may be submitted in one of two primary ways.  These are through oral or written testimony (via witness declaration) or through a Notice of Reliance.   Evidence submitted in connection with a Notice of Reliance is generally limited to self-authenticating evidence.  If a party attempts to introduce evidence in its Notice of Reliance (such as website pages), it is proper to do so only in limited circumstances.  If the evidence is being offered to establish the truth of the matter asserted in the print-out, then it can be challenged as hearsay.

It is important to consider your options prior to filing an Answer if your trademark application is opposed.

Trademark Opposition.   A trademark opposition is an inter-partes proceeding before the U.S. Trademark Trial and Appeal Board.  Any third-party may file a notice of opposition against a trademark on one or more several grounds.  These include that the applied for mark is:

  • likely to cause confusion with the Opposer’s preexisting registered mark or common law rights;
  • merely descriptive of the goods or services for which registration is sought;
  • primarily merely a surname;
  • geographically misdescriptive;
  • generic of the goods or services

In addition to the above grounds, the Opposer may claim that the Applicant:

  • lacked a bona fide intention to use the mark in commerce at the time it filed its trademark application;
  • committed fraud on the trademark office in the filing or maintenance of its trademark application

A trademark applicant usually has 40 days to answer a trademark opposition.   An Applicant can explore other options to settle the dispute prior to filing its Answer.  Some of those options are set forth below:

Narrow the identification of goods or services.   The jurisdiction of the U.S. Trademark Trial and Appeal Board is limited to issues of registration only.  In other words, the TTAB does not have the authority to order any applicant to cease using its trademark in commerce.  It can however, refuse the trademark registration.  In likelihood of confusion cases, Opposers often seek an agreement with the Applicant.  The Applicant can agree to delete certain goods from its identification of goods.   If the Applicant agrees to do so, it is possible that the Opposer will agree to withdraw the opposition.

Withdraw the Application.   If the Applicant agrees to withdraw the application,  there is nothing left to adjudicate before the TTAB.  This is due to the Board’s limited jurisdiction.  Note, however, that a judgment will issue in favor of the Opposer.   This means that the Applicant will not be able to seek to apply for that mark using the same or similar goods in the future.  If an Applicant is considering withdrawing its trademark application, it is preferable to seek a coexistence agreement.

Enter into a coexistence agreement.  A typical coexistence agreement will permit the Applicant to continuing using its mark in commerce subject to certain limitations.  These may include that the Applicant delete certain goods from its identification or stipulate not to apply for related goods under the same mark in the future.    Whether to agree to enter into a coexistence agreement with an Opposer should be considered on a case-by-case basis.  In general, it is not wise to enter into an Agreement if the terms include that the Opposer is able to continuously monitor your future marketplace uses.  Moreover, if the Agreement has any clause for breach of the Agreement, this is something where an Applicant should hesitate to sign.   The best coexistence agreements are those that are definitive, limited in time and scope, and do not leave open any possibility to breach the agreement in the future.

By considering the above-alternatives, an Applicant may still be able to achieve its business goals without having to get involved in a costly trademark opposition proceeding.  While every case is different and no outcome is certain, it is advisable to engage in discussions early in the process to avoid any unnecessary escalation in attorney’s fees and risks to your marketing plans.

Practical Advice for TTAB proceedings was the subject of a session at INTA Boston 2019.

The topics of discussion were as follows:

Difference between TTAB and District Court.   Proceedings before the TTAB are usually more narrow and streamlined.  This is due, in large part, on the limited jurisdiction of the Board to issues of registrability only.

Scheduling.  The TTAB gives the parties a little more flexibility on the scheduling, particular where both parties consent to extensions of time.  In District Court, the court is usually more rigid and often seeks to force the parties to either commit to trial or to engage in settlement discussions.  That being said, there are certain mandatory deadlines in the TTAB that are not flexible, including serving discovery at least 30-days prior to the expiration of the period

Admission of Evidence.  In the TTAB, Notices of Reliance and Testimony declarations are the most-used vehicles for admission of evidence.  Direct evidence can be either through trial testimony deposition (in part of your case-in-chief) or by declaration.  Self-authenticating evidence, generally in the form of internet print-outs, trademark registrations, and other publicly available materials, can be admitted through Notice of Reliance.  Declarations also give the opposing party the option to either cross-examine the declarant, or attack the testimony in the form of your client’s own rebuttal affidavit.

Strategic Choices.  The issue of whether to proceed before the TTAB or district court is often dependent on the various factors.  Some of these include whether the mark is an intent to use, or perhaps in the venue where you believe your client may obtain a more favorable outcome.  Since the TTAB’s jurisdiction is on issues on registration only, it often looks at three main factors in making a decision:  (a) similarity of marks; (b) similarity of goods; and (c) similarity of trade channels.   These factors are often predictable and do not consider in great detail marketplace use as it relates to likelihood of confusion.  If a party files an opposition, there is always the risk that a declaratory judgment action in district court may be the responsive pleading.  In certain cases, a trademark applicant who is a defendant in an opposition can trigger its insurance coverage if it brings a declaratory judgment action for non-infringement.

Role of Interlocutory Attorney.   All contested motions are referred to the interlocutory attorney (IA).  The IA is also responsible for conducting the discovery conference (if requested).  Parties can also establish that they prefer to appear at deposition telephonically and to have motion be determined by phone rather than written opinion.

The speakers were Roxanne Elings, Kathleen McCarthy, and Judge Elizabeth Dunn of the U.S. Trademark Trial and Appeal Board.  The moderator was Pamela Chestek.

A recent petition to cancel a trademark registration is a good lesson in what constitutes a well-drafted cause of action.

In Bonehead Brands, LLC v. Direct Impulse Design, Inc.,  Petitioner sought to cancel Reg. No. 3182681 of the mark BONE HEAD OUTFITTERS and Design for various apparel items in International Class 25.   The Respondent thereafter filed a motion for summary judgment on Petitioner’s pleaded claim of abandonment. The history leading up to the motion for summary judgment and the Board’s decision deserves comment.

On May 11, 2016, the Respondent filed a combined Section 8 and Affidavit together with a specimen of use that purported to show the mark in continuous commerce.  The USPTO accepted the Section 9 renewal portion of the affidavit, but rejected the specimen submitted in support of the Section 8 affidavit of continuous use.   The USPTO required a substitute specimen be submitted.   The Respondent failed to submit a response to the Office Action within the six (6) month period for doing so.

Shortly thereafter, the Examiner issued a second office action.  There, the Examiner stated that the trademark registration would be cancelled if the Respondent failed to furnish an acceptable substitute specimen of use within an extended six (6) month period.  Approximately one week later, the Petitioner filed a petition for cancellation of the registration.  Petitioner indicated that its basis was on the grounds of abandonment.  Two days later, the Respondent filed a combined Section 8 and 9 declaration with a substitute specimen.  The combined Section 8 and 9 declaration was accepted and the registration was renewed.

In its motion for summary judgment, Petitioner contended that the BONE HEAD OUTFITTERS registration should be cancelled on the grounds of abandonment. Section 45 of the Trademark Act governs the rule regarding cancellation of a trademark registration due to abandonment.  It states in pertinent part:

Abandonment of a Mark.  A mark shall be deemed to be “abandoned” if…the following occurs: (1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment.

The Board ruled that while Petitioner stated that the petition was for abandonment, it failed to properly plead the predicate grounds for cancellation of a registration on the grounds of abandonment.   The failure to timely file a Section 8 or 9 Declaration is not a recognized ground for abandonment.  There is no mechanism for a third-party to bring a petition for cancellation due to failure to properly or timely file a Section 8 or 9 Affidavit.  Rather, in the absence of the Director of Trademarks issuing its own cancellation of a registration, a Petitioner can only seek cancellation on one of the grounds enumerated under Section 14 of the Trademark Act.  Here, the Petitioner failed to plead that the Registrant had abandoned its mark due to discontinued use with an intent not to resume use.  Accordingly, the Registrant’s motion for summary judgment was granted.

Author’s Note:   If you or your company requires additional information on a petition to cancel on the grounds of abandonment, contact us.

Before filing a trademark opposition, be sure to assess whether you will be likely to prevail. By doing so, you can potentially save thousands of dollars in attorney’s fees and avoid subjecting your brand to unnecessary risks.

The determination of whether to file a trademark opposition to contest a third-party’s trademark application is not always simple. Before filing a notice of opposition, the potential Opposer should take into account the following considerations:

Causes of Action.  Under the Trademark Act, there are numerous grounds under which to bring an opposition.  Some of the more common grounds include that:

(a) the mark, when used in connection with Applicant’s applied for goods or services, is likely to cause confusion with Opposer’s previously used or registered mark;

(b)  the Applicant did not have a bona fide intent to use its mark in commerce at the time of filing

(c)  Applicant’s mark is merely descriptive of its goods or services

(d)  there was no bona fide use in commerce of Applicant’s mark prior to its filing a use-based registration

Merely pleading the grounds for opposition is not enough; the Opposer must prove the elements of its claims by a preponderance of the evidence.

Proof.   Every opposer must establish procedural and substantive proofs in order to prevail.

(a)  Standing.   An Opposer must first establish its standing to bring and maintain a trademark opposition before the Trademark Trial and Appeal Board.  Standing is satisfied when the Opposer shows that it has a legitimate interest in the outcome of the proceeding (i.e., it is not a mere intermeddler) and that it will be damaged should the registration issue.  If the Opposer cannot establish its standing, then the action will be dismissed and the substantive grounds for the opposition will not be considered.

(b)  Priority.   In cases where a likelihood of confusion is alleged pursuant to Section 2(d) of the Trademark Act, the Opposer must establish that it has priority trademark rights that are superior to Applicant’s constructive or actual first use dates.  Priority rights may be shown through a prior registration, earlier trademark use, or use analogous to trademark use.

(c)  Substantive considerations.  Once an Opposer meets its procedural threshold requirement of standing, the elements of proving its case differ depending on the specific grounds of the Opposition.  To establish a Section 2(d) case for likelihood of confusion, the Board undertakes the 13-part test found in the case In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).   A discussion of this test may be found here.  With regard to establishing that Applicant’s mark is merely descriptive pursuant to Section 2(e) of the Act, the Opposer must show that the mark merely describes a feature, characteristic, ingredient, purpose, or function, or use for the applied for goods.   A discussion of the test for mere descriptiveness may be found here.

Practice Tip:  Companies and in-house counsel who are considering filing a notice of opposition can discuss the implications of doing so with the author.  In addition to filing a notice of opposition, there are other alternatives that can be discussed depending on the business goals of the client.  Being fully apprised of these options will serve the interests of the brand owner client.

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.