"trademark opposition"

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When your company is faced with a trademark opposition,  there are many misconceptions of what it is and what it is not.  Be sure to have a clear understanding of what to expect to help guide your decision making process.

Governing Rules.  Trademark oppositions in the United States are heard before the U.S. Trademark Trial and Appeal Board (TTAB).    Proceedings before the Board are governed by various federal statutes and administrative rules, including the Lanham Act, Trademark Rules of Practice, as well as the Federal Rules of Civil Procedure.   How the Board may rule in a particular case is largely influenced by  decisions in prior cases.  These include the holdings of the TTAB as well as the decisions of the Court of Appeals for the Federal Circuit.  Litigants should consult the Trademark Board Manual Procedure for all rules applicable to proceedings before the Board.

Phases of Litigation.   As a contested civil litigation between two parties, a trademark opposition consists of several distinct phases.   These include pleadings, discovery, and trial.   Each one is briefly summarized below:

  1.   Pleadings.   The complaint is known as a Notice of Opposition (“Notice”).   Any party that believes that it will be damaged by the registration of another party’s trademark may file an opposition during the proscribed period for doing so.  The Notice of Opposition should include a short and plain statement of the claim showing that the Opposer is entitled to relief and the demand for the relief sought.  The most common grounds for a Notice of Opposition are likelihood of confusion, descriptiveness, and lack of a bona fide intention to use the mark in commerce at the time of filing.   An Answer to the Notice must be filed after 30 days of service, and may include affirmative defenses and counterclaims if applicable.
  2.  Discovery.   The discovery phase is often the most lengthy and protracted phase of litigation.  Discovery may include interrogatories, requests for production of documents, requests for admissions, and depositions.  The purpose of discovery is to gather relevant information and documents that tend to support one’s own case, or alternatively, discredit the legal position of one’s adversary.   The discovery period is set by the Board, and each party has 180 days to conduct relevant discovery.
  3.  Trial.   Commencing 60 days after the close of discovery, the trial period begins with the Opposer’s 30 day testimony period, followed by the Applicant’s 30 day testimony period, and the Opposer’s 15 day rebuttal.  Interestingly, a trial before the TTAB is unlike other civil proceedings, in that the “trial” is all on the papers — there is no live trial before judges.  Instead, the parties submit their evidence in the form of notices of reliance and trial briefs to establish the facts and legal support necessary to prevail.   Notices of Reliance generally reference to documents, deposition testimony, and other information gathered in the discovery process, and in certain situations, during the trial phase of the case.

How to Get Started.    In evaluating a U.S. trademark opposition, it is important to have knowledge of your own case, as well as that of your adversary.   Therefore, it is best to first conduct a search of the other party’s trademarks and common law uses that may be available on the internet or other publicly available sources.  Once this is done, it is best to discuss the matter with a qualified trademark opposition attorney who will be able to discuss with you how such proceedings work, the potential attorney’s fees involved, as well as your options moving forward.

In an effort to facilitate case management and to reduce litigation expenses, the Trademark Trial and Appeal Board permits certain motions to be hear via telephone conference.  These include motions in the pleading phase, discovery phase, and/or the trial phase of a trademark opposition or trademark cancellation proceeding.

Examples of motions that the board may dispose of by way of telephone conference include:

  • motions to extend deadlines
  • motions to suspend proceedings
  • disputes regarding interrogatory numbers and limitations
  • motions to compel the attendance of a witness at deposition
  • motions to quash a notice of deposition

The availability of telephone conferences is not limited to motion practice. Additional matters that the parties might want to consider bringing before the board by phone include disputes involving:

  • the right of priority to obtain discovery multiple discovery responses where a narrowing of the issues is warranted; and
  • matters where board guidance would be helpful in interpreting the rules of practice before the trademark trial and appeal Board.

Parties are encouraged to take advantage of the Board’s willingness to expedite matters by phone.  While it may not be effective for all matters, the resolution of disputes by phone are in the best interest of all parties, particularly when decisions on formal written motions take approximately 3-4 months to be resolved.

Futher information on the Board’s telephone conferencing dispute mechanism may be found on the Trademark Trial and Appeal Board website of the United States Patent and Trademark Office.

Once a trademark opposition proceeding has been commenced, there are several procedural and substantive means by which the parties may bring about an amicable resolution of their dispute. Knowing how to effectively negotiate a favorable outcome is essential.

Substantive strategies to settle a trademark opposition proceeding include:

1. By Amendment: by narrowing the identification of goods in the application, it is possible to allay the concerns of the trademark opposer through the deletion of those goods in the application that it finds most objectionable.

2.  By Withdrawal:  Quite often, the trademark opposer’s main concern is to keep confusingly similar trademarks from appearing on the principal register. In this case, the parties may agree for the trademark applicant to withdraw its application in exchange for a promise that the trademark opposer will not object to the applicant’s use of the trademark in commerce.

3. By Timing:  Trademark opposers have little incentive to settle until after the completion of the discovery period.  At that time, the parties are better able to assess the strengths and weaknesses of their respective positions.  If you are the applicant, it is best to wait to discuss any possible settlement until at least after the Answer has been filed.

Procedural methods to conclude a trademark opposition proceeding include:

1. Withdrawal by Opposer:  Under the Code of Federal Regulations that governs trademark opposition proceedings, a trademark opposer may withdraw its opposition without prejudice at any time prior to the Applicant’s filing of the Answer.   if the opposition is withdrawn after the answer has been filed, then the written consent of the applicant is required for the opposition to be withdrawn without prejudice.  Without such consent, the withdrawal of the opposition will be deemed to be with prejudice to the Opposer’s right to reinstitute a proceeding at a later date.

2.  Withdrawal by Applicant: After a trademark opposition has been commenced, an applicant may expressly abandon its trademark application only with the written consent of the Opposer.  The failure to obtain the written consent of the Opposer shall result in judgment being entered against the Applicant.

An experienced trademark opposition attorney will be able to discuss the best available options to settle a trademark opposition case in a manner most favorable to his/her client.  By doing so, it may save precious time and money in product development and marketing costs associated with the trademarks at issue.  Additional trademark opposition settlement strategies will be discussed in future posts.

The Trademark Trial and Appeal Board offers a helpful frequently asked questions section that provides basic information regarding the trademark opposition and trademark cancellation process.  Various Trademark Trial and Appeal Board subjects are summarized, including:

  • What is a Trademark Opposition?  A trademark opposition is when one party contests the application for registration of a trademark by another party.  Quite often, the bssis for the opposition is a likelihood of confusion with the Oppoer’s previously registered trademark.  A trademark opposition proceeding is commenced by filing a Notice of Opposition. 
  • What is a Trademark Cancellation?  A trademark cancellation is when one party seeks to cancel the trademark registation of another party.  Grounds for a trademark cancellation may include fraud, abandonment (by lack of use for three consectutive years and an intention not to resume use), and other grounds, such as genericness. A trademark cancellation proceeding is commenced by filing a Petition for Cancellation.
  • What is the Procedure for a Trademark Opposition?  After a Notice of Opposition has been filed, the Trademark Trial and Appeal Board will serve a copy of the Notice on the Applicant, together with a schedule of the discovery and trial dates.  The Applicant will have forty days from the maling date of the Trademark Board’s notice of commencement of the case in which to Answer or otherwise plead.
  • What is the Procedure for a Trademark Cancellation?  After a Petition for Cancellation has been filed, the Trademark Trial and Appeal Board will serve a copy of the Petition on the trademark registrant, together with the discovery and trial schedule.  The trademark owner will then have forty days from the date of the Trademark Board’s notice of commencement of the trademark cancellation proceeding to either answer, or otherwise plead.

Parties who have trademark opposition or trademark cancellation matters before the Board should note that the Trademark Board rules of practice are extensive and must be followed without exception so as to protect the parties’ procedural and substantive trademark rights. These rules may be found in the Trademark Board Manual of Procedure.

A substantial number of trademark opposition cases before the Trademark Trial and Appeal Board are settled prior to a final determination on the merits.   The Board encourages parties to engage in settlement discussions early in the process, and has made these discussions part of the mandatory discovery conference between the parties.

Do the parties take advantage of the opportunity to discuss trademark opposition settlement?   Quite often, the answer is no.   There are many reasons for this unwillingness to explore an amicable settlement to the dispute, including:

  • Personal animosity between the respective parties
  • Trademark bullying (discussed elsewhere in this Guide)
  • Trademark lawyers who do not wish to see an early resolution of the dispute
  • Legitimate legal and business rationale

When faced with a notice of trademark opposition, the first thing to do is to seek advice from a trademark opposition attorney who can explain the nature of the case, potential merits of the claim, likelihood of success, and options for settlement.  Litigants should realize that a trademark opposition is a civil litigation that can be long and protracted.  Therefore, it is best to understand the options available to the trademark applicant or trademark opposer before proceeding. 

Trademark opposition attorneys are well-versed in the complexity and detail of trademark opposition rules of evidence and procedure.  Most will provide a complimentary consultation with the party to enable it to make an informed decision on how to best proceed with their trademark opposition case.  The trademark opposition lawyer should also discuss its fee options, including either an hourly fee or flat-fee for representation based on the various stages of the case.

Be sure to speak first with an experienced trademark opposition lawyer — you will be glad you did.

When served with a Notice of Opposition or Petition for Cancellation, it is the first inclination of many parties to consider not hiring a trademark lawyer in an effort to save money. Is representing yourself in a trademark opposition or trademark cancellation proceeding a wise investment?  Probably not.

The Trademark Trial and Appeal Board (TTAB) is the administrative body of the United States Patent and Trademark Office that decides ex parte appeals, oppositions, trademark cancellations, and concurrent use proceedings. The Trademark Trial and Appeal Board permits parties to represent themselves, but strongly cautions that being represented by a qualified trademark attorney is advisable given the complexity of trademark opposition and trademark cancellation proceedings. If a party decides to represent itself, it will be expected to adhere by all rules of procedure that govern trademark opposition and trademark cancellation cases before the Trademark Board. These rules may be found in the Trademark Board Manual of Procedure and the Federal Rules of Evidence. The failure to follow the rules can have a detrimental impact and be fatal to a party’s case.

If a party receives a notice of trademark opposition or petition for cancellation, it is required to file an answer within 40 days of commencement of the case. The answer should either admit, deny, or claim that there is insufficient knowledge to either admit or deny the allegations contained in each paragraph of the notice of opposition or petition for cancellation. A party can also receive an extension of time in which to file its answer to a notice of opposition or petition for cancellation by seeking an extension from the opposing party or its attorney, or by filing a request with the Board.

Time limits for filing notices of opposition, petitions for cancellation, and requests for extensions of time are strictly enforced. If a trademark deadline is missed, it is important to file a motion to accept the late filed request with the Board, showing good cause to set aside the missed deadline.

It is always advisable to speak with an experienced trademark opposition lawyer or trademark cancellation lawyer as a first step in proceedings before the Trademark Trial and Appeal Board.  A skilled trademark attorney will be able to discuss the potential strengths and weaknesses of your case, as well as possible alternatives to costly litigation.

Parties to trademark oppositions have tools at their disposal that have the potential to save money on trademark opposition attorneys by bringing about a swift resolution of the dispute. This is the idea behind the Accelerated Case Resolution (ACR) program of the Trademark Trial and Appeal Board.

ACR allows for the parties to receive a prompt determination of their respective claims and defenses, without the delay and uncertainty of a standard trademark opposition case.  ACR is the result of a realization that parties often spent considerable sums of money on the preparation and filing of summary judgment motions. Historically, most summary judgment motions are denied, resulting in costly legal fees that do very little to bring about a final determination of the case.

In an effort to encourage parties to explore settlement options, the Trademark Board instituted rules requiring the parties to discuss claims, defenses, and settlement possibilities at the beginning of the case.  Under ACR, the parties may request that the Interlocutory Attorney act as a settlement mediator.  In order to take advantage of ACR, the parties should make a genuine effort to determine whether a settlement is achievable without the need for costly litigation.  This requires good-faith dealing by both parties and their attorneys.

If you are a party to a trademark opposition, be sure to ask your attorney about whether your case is a good candidate for ACR resolution.

A trademark opposition is the result of a third–party filing a notice of opposition against a trademark owner’s application for registration of their trademark. A notice of opposition must be filed within 30 days after publication of the trademark application the official Gazette of the United States patent and trademark office.

The notice of opposition must include, at a minimum, the following allegations:

1.  the name of the opposer

2.  an allegation that the opposer believes it will be damaged by registration of the trademark

if the opposer is a corporation, a person who is duly authorized must sign the notice of opposition, or, if the opposition is being filed by an attorney, then the attorney will sign on his/her clients behalf.

The applicant has 40 days in which to answer, move, or otherwise plead to the notice of opposition. Note that trademark oppositions are governed by the trademark board manual of procedure (TBMP) which comprises specific and detailed rules that the parties must follow during the course of the trademark opposition proceeding. The failure to follow the trademark board rules can result in your trademark opposition case being dismissed (if the opposer) or judgment in favor of the opposer (if the applicant). Therefore, it is vital to speak with a qualified trademark opposition lawyer as soon as possible.

A skilled trademark opposition attorney can help you assess and review any claims or defenses that you may have as well as discuss possible settlement options that could save you time and money with your trademark opposition dispute.

A trademark opposition proceeding is commenced by timely filing a Notice of opposition with the United States Patent and Trademark Office.  According to USPTO rules, any person who believes that he/she may be damaged may file an opposition against a pending trademark application.  While the term “any person” is construed broadly for purposes of filing a Notice of Opposition, the Trademark Trial and Appeal Board has nonetheless held that the potential opposer must have a real interest or direct and personal stake in the outcome.  In addition, the potential opposer must have a reasonable belief that he will be damaged if the registration issue.  The grounds for filing a notice of opposition against a pending trademark application include:

  • a likelihood of confusion with the opposer’s trademark
  • descriptiveness or genericness of the pending trademark
  • geographic descriptiveness of the pending trademark
  • dilution of the opposer’s trademark
  • fraud in the procurement of the trademark for which registration is sought

The complaint should set forth the basic facts giving rise to the claim.  For example, for a complaint alleging a likelihood of confusion, it is advisable that the legal elements of proving a likelihood of confusion be generally alleged, including that the parties’ marks are similar in sight, sound, and meaning and that the parties’ respective goods and/or trade channels are similar such that confusion is likely.

A properly plead complaint is vitally important in ensuring the success of a trademark opposition case.  Should a notice of opposition be legally or factually deficient, the defendant/trademark applicant can move to dismiss the complaint, leaving the opposer with a major legal challenge to their case and higher legal costs.

A qualified trademark opposition attorney should always be consulted to discuss options for filing and successfully proceeding with a trademark opposition.

 

 

 

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.