Likelihood of Confusion

Collen - We represent corporate clients in U.S. trademark opposition and trademark cancellation proceedings that are based on a likelihood of confusion with a preexisting trademark.

Likelihood of confusion is one of the highest-cited reasons that a trademark application is refused registration.  The statutory basis may be found in Section 2(d) of the Trademark Act.  In order to prevail in a trademark opposition or trademark cancellation based on likelihood of confusion, the moving party must establish the following:

  1.   Standing.  Proof that the plaintiff has a legitimate stake in the proceeding and will be damaged if the defendant's application or registration is maintained.
  2.   Priority.  To establish priority of use, a party must show that its owns a preexisting trademark registration or common law use that has not been abandoned.  A plaintiff may prove prior use through either actual use or use analogous to trademark use, such as advertising brochures, newspaper publications, or websites which create a public awareness of the designation of the trademark as an identifying source.

Likelihood of Confusion Factors.   In addition to establishing standing and priority, the plaintiff must establish that the likelihood of confusion factors analyzed by the U.S. Trademark Trial and Appeal Board weigh in its favor.  These factors include a comparison of the parties' marks in relation to the:

  • Similarity of the marks
  • Similarity of the goods or services
  • Similarity of the trade channels
  • Evidence of actual confusion, if any
  • Fame of the prior mark
  • Number of similar marks in use on similar goods
  • Conditions under which purchases are made

and other relevant factors that are relied on by the Board.

Proceeding with a trademark opposition or cancellation matter requires an experienced trademark attorney that can weigh the merits of litigation versus other dispute resolution alternatives.  To discuss a trademark opposition or trademark cancellation case based on a likelihood of confusion, please contact James Hastings or a member of the Collen TTAB litigation team.

Notice of Opposition

Notice of Opposition:  Summary

A notice of opposition is a complaint filed in a trademark opposition proceeding seeking denial of another party's trademark registration.  Trademark oppositions are heard before the U.S. Trademark Trial and Appeal Board.   Below are some helpful tips for both trademark opposers and trademark applicants who may be in involved in a trademark opposition proceeding.

        1.  Trademark Opposers

Any party who believes that it will be injured by the registration of a trademark can file a notice of opposition at the appropriate time for doing so.  The relevant time frame to file the complaint is within 30 days of publication of an application of the Official Gazette.   Potential opposers can elect to obtain an automatic 30 day extension of time to file an opposition.  In the alternative, a potential opposer can seek a 90 day extension of time on motion and for good cause shown.

The complaint must, at a minimum, set forth the Opposer's statutory right to bring a cause of action as well as the grounds for opposition.

  2.  Trademark Applicants

If a trademark applicant receives an opposition notice, it should discuss the notice with an experienced trademark opposition attorney.  The attorney will review the complaint to ensure that it meets all statutory grounds, as well as assess any alleged facts or statements of law that the Opposer is asserting as part of the Opposition.  The applicant will have the right to negotiate a potential settlement which could take many forms.  There is a also a mandatory discovery conference where the parties' counsel discuss the respective positions of the parties, and determine whether an amicable settlement can be achieved.

Trademark Cancellation

Rothwell Figg - The U.S. Trademark Cancellation Law Firm

A trademark cancellation can seriously impact the value of a company's brand. Conversely, it can be brought strategically to remove a competitor's trademark registration from the Registry that is negatively impacting a party's rights.

More information on how to cancel a trademark registration may be found in our informative article here.

Trademark cancellation proceedings are heard before the U.S. Trademark Trial and Appeal Board. Approximately 2,500 U.S. trademark cancellations are filed each year.  The complaint, known as a petition for cancellation, can seek cancellation of a trademark registration in its entirety.  Alternatively, a petitioner can request a partial cancellation of a third-party's registration to remove certain goods or services from the registration.

In the United States, there are numerous grounds to cancel a trademark registration.  These include likelihood of confusion, abandonment of the mark, mere descriptiveness, and fraud in the procurement of the registration.  If a trademark cancellation proceeding has been filed against your company's trademark, you have several options to avoid an adverse judgment.   Rothwell Figg represents both domestic and international companies in trademark cancellation proceedings before the U.S. Trademark Trial and Appeal Board.

This is due in large part to USPTO rules that have resulted in more trademark cancellation proceedings being brought on the grounds of abandonment or non-use of certain goods contained in the registration.

According to 15 U.S.C. Section 1127, trademark abandonment occurs when a trademark's use has been discontinued with an intent not to resume use.  Non-use of three consecutive years shall be prima facie evidence of abandonment.  An intent not to resume use may be found by taking account all objective evidence.  As such, a registrant cannot avoid a finding of trademark abandonment by simply alleging that it had intended to resume use.

To discuss your case, please contact James Hastings of Rothwell Figg for a complimentary consultation.

Trademark Infringement

Trademark infringement.  Trademark infringement is the unauthorized use of a trademark or service mark that is likely to cause confusion about the source of the goods or services.  Under federal law, a cause of action for trademark infringement is governed by Section 2(d) of the Trademark Act (15 USC Section 1114).

A trademark owner that believes that its mark is being infringed may bring a cause of action for trademark infringement in U.S. federal court.  If the trademark owner is successful in proving infringement, the remedies available to it may include the following:

  • a court order that the infringer stop uses its mark
  • an order that the infringer destroy its merchandise bearing the infringing mark
  • monetary damages
  • attorney's fees

Trademark infringement test.  The various factors that courts consider in determining whether a likelihood of confusion exists for a finding of infringement include:

  • similarity of the parties' marks
  • similarity of the goods or services
  • similarity of trade channels
  • sophistication of the purchasers
  • strength of the plaintiff's mark
  • evidence of actual confusion
  • the nature and extent of similar third-party mark
  • likelihood of the senior user bridging the gap

Not all of the above factors are inclusive.

Checklist.  If your company is a trademark owner, or has received a cease and desist letter or a complaint for trademark infringement, you may speak with James Hastings to discuss the options available to you to bring or defend your case.

Trademark Opposition

ROTHWELL FIGG - The U.S. Trademark Opposition Law Firm.  Rothwell Figg has substantial experience in representing global companies in trademark opposition proceedings before the U.S. Trademark Trial and Appeal Board.

Why work with us?  Here are a few reasons:

  • Our attorneys have represented clients in several hundred U.S. trademark opposition proceedings
  • Our client list includes well-known international brands
  • We offer reasonable hourly rates and/or fixed-fee options for each phase of the proceeding
  • We are leaders in the U.S trademark industry, and our professionals have served on the Executive Committee of the International Trademark Association and the INTA Trademark Mediators Network

Here are some of the clients who have retained our services:

  • Multinational consumer brand companies
  • U.S. consumer product and service companies
  • U.S. Healthcare System and wellness companies
  • Small business owners and start-ups
  • Non-profit associations
  • Multichannel retailers

Attorneys and law firms also seek out our services to represent their own clients or provide guidance and subject matter expertise.

To speak with our attorneys about your matter, please contact James Hastings at (914) 941-5668 or email: