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The Trademark Trial and Appeal Board recently released its TTAB filing statistics for fiscal year 2018.   These updated figures include year-to-year changes in the filing of appeals, notices of oppositions, and petitions for cancellations.  It also provides useful information on the disposition of cases.

Highlights include the following:  (percentage in parentheses signifies change over 2017)

I.   Filings

  • Appeals: 3,223; (+2%)
  • Extensions of time to oppose: 19,208;  (+3.9%)
  • Oppositions: 6,496 (+5.5%)
  • Cancellations: 2,253 (+7.2%)

II.   Contested Motions

  • # of decisions issued:  1,082  (+9.2%)
  • # of motions resolved by decision: 1318  (+6.5%)
  • Average pendency:  9.4 weeks  (+20.5%)
  • # of cases with motions awaiting decision:  165 (+12.2%)

III.    Trial Cases and Appeals Pendency

  • Appeals:  35.8 weeks (-7.8%)
  • Trial Cases: 140.3 weeks (-10.8%)
  • ACR Trial Cases:  106.3 weeks (-11%)
  • # of ACR Cases decided:  19 cases
  • Awaiting decision at end of period:  130 cases (+39.8%)

Conclusions

These most recent TTAB statistics yield some interesting observations:

  1.   TTAB litigation is increasing.   Opposition and cancellation proceedings are up on average approximately 6% combined.  This could be due in part to greater brand enforcement efforts being undertaken as a result of a stronger economy.  With regard to cancellations, the USPTO has made it quite clear that “deadwood” registrations that contain goods or services that are no longer used are subject to cancellation either in whole, or in part.  Therefore, the increase in both opposition and cancellation filings could be for offensive as well as defensive purposes.
  2.  There is increased motion practice.   Although both the Board and the Federal Rules encourage the just and speedy resolution of contested proceedings, and for both parties to cooperate fully, this sadly is not always the case.  While it cannot be proven, the failure to cooperate often results in protracted proceedings, including greater motion practice and higher attorney’s fees.
  3.  TTAB is focused on speedier resolution of cases.   The TTAB has made a commitment to several things that will help shorten the inter-partes cases lifecycle, including encouraging the parties to stipulate to Accelerated Case Resolution (ACR) procedures, engage in mandatory discovery conferences where settlement options are explored, and further mandate the cooperation between counsel.

Editor’s Note:   Parties are encouraged to protect their trademark rights at all times.   This is best done through proper monitoring and enforcement.  Should a trademark opposition or trademark cancellation proceeding be necessary to enforce a brand owner’s rights, it is recommended to speak with a qualified trademark attorney experienced in TTAB proceedings.

 

A recent trademark opposition is a lesson in what happens when there is a crowded field of similar trademarks.

In Inter-Industry Conference on Auto Collision Repair v. LM Industries Group, Inc., Applicant sought registration of the mark ICAR or land vehicles in International Class 12.  Opposer filed a notice of opposition against the ICAR application on the basis that it was likely to cause confusion and dilute Opposer’s rights in its eight registered marks incorporating the term I-CAR.   Opposer’s marks are in the field of auto body repair and damages analysis.  In its analysis of whether a likelihood of confusion existed between the parties’ marks, the TTAB compared Opposer’s Reg. No. 1607727 of I-CAR for “educational services consisting of conducting training course in auto body repair and damages analysis,” in Class 41 with Applicant’s mark in Class 12.  The Board chose this specific registration as it was the closest to the goods offered by Applicant for the same or similar auto body repair and damages field.

In its opinion, the Board recognized in that analyzing the relevant likelihood of confusion factors, two key considerations are the similarity of the marks and the similarity of the goods or services.  Yet at the end of the day, the number of third-party registrations of ICAR and its derivatives proved conclusive.

In ruling against the Opposer, the Board reasoned that:

Despite the similarities of the marks and the niche fame of Opposer’s mark, we find that the number of third-party users for automobile related services, the differences between the goods and services, channels of trade, and classes of consumers, as well as the heightened degree of sophistication and care in the decision-making process in purchasing Opposer’s educational services and Applicant’s automotive goods, warrant a finding that there is no likelihood of confusion.

Editor’s Note:   The Board’s finding that no likelihood of confusion existed between the parties’ marks was despite the fact that it concluded that Opposer’s mark was strong and had achieved fame in the field of automobile collision repair.  However, since ICAR derivatives had been registered and used by numerous other third-parties for other facets of automobile goods and services, it concluded that Opposer was entitled to a restricted scope of protection outside the automobile collision repair category.

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.

 

Given the burden of proof necessary to establish a finding of trademark genericness, it comes as no surprise that a recent Trademark Trial and Appeal Board decision affirmed this principle of trademark law.

In the trademark opposition case Frito-Lay North America Inc. v. Real Foods Pty. Ltd.,  Applicant sought to register two trademarks, CORN THINS for “crispbread slices primarily made of corn” and RICE THINS for “crisp bread slices primarily made of rice.” (the “THIN marks”).   The terms corn and rice were disclaimed in the applications.   The Opposer, Frito-Lay, in its notice of opposition, alleged that Applicant’s THIN marks were generic names for Applicant’s respective goods; highly descriptive of Applicant’s goods so as to be incapable of acquiring distinctiveness; and merely descriptive of  crispbread  made of thin slices of corn or rice, without evidence of acquired distinctiveness.

The Trademark Trial and Appeal Board recognizes a two-part test for genericness:

(1) what is the genus of goods or services at issue; and

(2) does the relevant public understand the designation primarily to refer to that genus of goods and services.

In doing so, the relevant consuming public’s perception is the primary consideration.   Such evidence may be in the form of consumer surveys, dictionaries, trade journals, newspapers, or other credible sources.   Here, the Opposer introduced evidence to support its claim that RICE THINS and CORN THINS are generic, including dictionary definitions, examples of Opposer’s own use of “thin” for its various snack product, as well as third-party marketplace uses.  In addition, Opposer introduced various internet search results for use of “thin” to promote third-party snack products.   To refute the claim of genericness, Applicant submitted the trademark registrations of numerous third-parties who have received registrations for marks containing the word “thins” in connection with snack and food products that did not include a disclaimer for the “thin” portion of the marks.    Here, the Board concluded that based upon the totality of the evidence, “thins” was not generic due to the various marketplace use of thins in combination with various food items and as a source-indicator for third-party products.

The Board went on to discuss whether RICE THINS and CORN THINS were incapable of acquiring distinctiveness, which could occur if the word or phrase being considered is so laudatory or descriptive as to be incapable of acquiring distinctiveness.  Here, the Board found that “corn thins” and “rice thins” were not so highly descriptive or laudatory so as to prevent the terms from being source indicators of Applicant’s products.  However, at the end of the day, what was required of Applicant was that it had to make a showing that its “thins” marks were not merely descriptive of  its goods.  Applicant failed to do so, due in part to its lack of substantial sales or advertising expenditures connected with its rice thins and corn thins products.  Accordingly, Applicant, having failed to establish evidence of acquired distinctiveness, was refused registration and the opposition was sustained on the ground that Applicant’s marks were merely descriptive and did not acquire distinctiveness.

 In the trademark opposition case, Halo Trademarks Limited v. Halo 2 Cloud LLC,
Trademark imagethe Opposer opposed the intent to use application of Applicant’s mark HALO  for handbags, briefcases,  electric adapters and a wide variety of other business accessories on the ground of likelihood of confusion under Section 2(d) of the Trademark Act.  As the basis for its opposition, Opposer relied on its previously used HALO and HALO and Design marks for numerous business accessories in International Class 18, including certain goods applied for by Applicant.
To prevail on a likelihood of confusion claim brought under Trademark Act Section 2(d), a party must first prove that:
  • it owns “a mark registered in the Patent and Trademark Office or a mark or trade name previously used in the United States …and not abandoned….” Trademark Act Section 2, 15 U.S.C. § 1052.

Here, the Opposer did not have a registration for its own HALO marks and therefore was required to establish its prior proprietary rights in and to the mark through testimony and documentary evidence showing actual use or use analogous to trademark use.   Accordingly, the Opposer sought to rely on its intent to use application for HALO to establish constructive use priority rights in and to the mark.  The filing date of Opposer’s intent-to-use applications was March 19, 2010, which preceded Applicant’s filing date of its HALO mark of May 5, 2014.  Neither party took testimony evidence and submitted notice of reliance of their respective applications and discovery requests and responses.

The  U.S. Trademark Trial and Appeal Board ruled that the Opposer was entitled to rely on the filing dates of its intent to use applications to establish constructive use of its HALO mark as of that date pursuant to Section 7(c) of the Trademark Act.  That being said, in order to prevail based on trademark priority, any judgment entered in favor of the Opposer would be contingent on the Opposer actually using its marks in commerce and registration issuing on its pending applications.  In addition to establishing priority of rights, the Opposer would still have to bear its burden under Section 2(d) that Applicant’s HALO mark was likely to be confused with the HALO marks of Opposer.
The Board concluded that the parties’ respective marks as examined in connection with the goods and respective trade channels, pointed towards the conclusion that they were confusingly similar in sight, sound, meaning, and commercial impression such that the Opposition should be granted and registration refused.   Therefore, the Board entered judgment, contingent on the issuance of the Opposer’s pending applications.

 

Here’s another example of how the naming of trademarks is often influenced by references to pop-culture.

In a recent U.S. trademark opposition decision, the Trademark Trial and Appeal Board ruled that the mark SUNNY HAZE for beer was confusingly similar to PURPLE HAZE, for inter alia, beer, so as to prevent registration.  In the case, Abita Brewing Company LLC v. Mother Earth Brewing, LLC, the Board was faced with considering whether the Sunny Haze mark of Applicant for “beer, and brew malt-based alcoholic beverage in the nature of beer” was confusingly similar to Opposer’s Purple Haze mark for “beer, ale, lager, and malt liquor.”  In its Notice of Opposition, the Opposer also relied on two of its other registrations for the Purple Haze mark for “shirts, caps, headwear, and beverageware.”

Continue Reading Purple Haze is a Strong Trademark for Beer but Apparently not for Hendrix

When a company discovers that a competitor has filed a trademark application for a brand name that may be deemed confusingly similar to its own, it has an effective alternative to expensive U.S. District Court litigation: oppose the trademark application by filing a notice of opposition with the U.S. Trademark Trial and Appeal Board (“TTAB”).

Here are 3 considerations when considering to file a trademark opposition proceeding:

Continue Reading Opposing a Trademark Application: Getting Started

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.

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.

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.