What happens when a trademark application is opposed and then the Opposer does not follow the rules?   In the case of West Indies Trading Company LLC v. Nicole Averette, a quick dismissal that is a lesson in the importance of form over substance.

In West Indies, the trademark Opposer filed a trademark opposition against Applicant’s mark NIKKI VS NICOLE for dresses, shirts, shorts, and swimwear in International Class 25.   The mark was opposed based upon a likelihood of confusion under Trademark Act Section 2(d) based on Opposer’s six trademark registrations for marks containing the words NIKKI BEACH for a wide variety of goods and services as well as Opposer’s alleged common law mark NIKKI BEACH for “clothing, sun care products and related merchandise that have included fragrances.”  The Opposer cited as additional grounds that its NIKKI BEACH mark had become famous and that Applicant’s mark would dilute the distinctive value of Opposer’s marks.  Applicant filed an Answer but neither side submitted any evidence or took testimony during their trial period.  Opposer did, however, file a brief in the case.

The Record on which the Board rendered its decision consisted only of the pleadings and Applicant’s trademark application.  Most importantly, Opposer’s trademark registrations were not made of record nor was there any other testimony or evidence.  In ruling against the Opposer, the Board made the following observations on how Opposer missed several opportunities to introduce its registrations into evidence.  For example:

  • opposer could have attached to its Notice of Opposition status and title copies of its registrations; or
  • a current copy of its registrations from the USPTO’s electronic database; or
  • introduced the registrations through its notice of reliance or through its witnesses during the testimony period

Although Opposer did submit copies of its registrations with its brief, the Board held that it was too late in the proceeding to do so and therefore the registrations were inadmissible.  In addition, the Board ruled that the Opposer failed to establish its standing but nonetheless recognized Opposer’s standing to bring its opposition based on admissions in Applicant’s answers.  In the end, however, Opposer’s failure to present admissible evidence of its registrations or prior use doomed its Opposition without it ever proceeding to a decision on the merits.

The lesson?  Always be sure to follow the rules as found in the Trademark Board Manual of Procedure. 

To a trademark opposer, the filing of a trademark opposition is a serious matter with an uncertain outcome.  If an opposer loses a trademark opposition case, the trademarks on which it is relying to bring the opposition can be further weakened.  On the other hand, if a trademark applicant loses a trademark opposition then the application will be rejected, further jeopardizing the applicant’s plans to use the trademark on certain products and services.  Therefore, for both opposer and applicant, a trademark opposition poses unwanted risks to their respective trademarks that perhaps could be avoided by settling the case.

When is the Best Time to Settle a Trademark Opposition?

Generally, there are three (3) opportune times to attempt to settle a trademark dispute with another party:  These include:

  • Prior to the Filing of the Trademark Opposition – once a trademark cease and desist letter is served;
  • Prior to an Answer Being Filed –  the trademark applicant might consider first contacting the Opposer to determine what are their business reasons for filing the trademark opposition and whether some sort of Agreement can be reached without the need for litigation
  • During the Mandatory Settlement Conference– the parties to a trademark opposition proceeding are required to “meet and confer” – almost always by phone, to discuss the facts and allegations of the dispute and to determine whether a settlement may be achieved.  This conference takes place after the filing of the Answer during the early stages of the case

Remember that in trademark opposition cases, timing is everything.  Knowing when and how to approach your opponent to discuss settlement is best left to an experienced trademark opposition attorney.  This could make the difference between a long, protracted litigation and one that gets resolved quickly.