Trademark owners who are considering whether to bring a trademark opposition should keep in mind the Boy Scouts® motto: be prepared. Not all trademark opposition cases are alike; therefore in assessing the strength of a particular case, it is wise to consider three elements that could have a significant impact on the likelihood of success.
1. The Facts. It is quite common for plaintiffs to file first and investigate later — this is particularly true in trademark opposition cases. In fact, many Opposers believe that as a Plaintiff, they are in the right and that the Trademark Trial and Appeal Board (“TTAB”) will deem the trademark applicant to be a bad-faith infringer who has usurped the Opposer’s trademark rights. The TTAB, like all tribunals, decides matters based on the facts of each case, together with properly introduced evidence, as applied to the governing law. Emotion is left at the courthouse door and is not persuasive. Therefore, trademark opposers should be sure to investigate all facets of their case and any affirmative defenses that an Applicant may raise prior to filing a Notice of Opposition.
2. The Law. In trademark opposition cases where a likelihood of confusion is the basis of the claim, the TTAB looks to several factors in determining whether a likelihood of confusion exists. These elements include the strength of the Opposer’s trademark, the similarity of the marks in sight, sound, and commercial impression, the similarity of the channels of trade, as well as the similarity of the products and/or services at issue that are associated with the parties’ trademarks. A trademark opposer should carefully consider whether the legal factors necessary to prove its case exist based on proper due diligence and a review of all publicly available information regarding the Applicant’s commercial activities.
3. The Adverse Party. Many companies, particularly larger ones, are quick to file a Notice of Opposition (even with a less than stellar case), if they believe that the trademark applicant is not “deep-pocketed” and cannot afford the cost of litigation. In fact, in some instances, this form of unfair economic leverage is known as “trademark bullying” as been addressed by the TTAB and the Trademark Office’s policy arm in an effort to level the playing field between large corporations and smaller businesses. There are situations, however, where an Opposer with a strong case can properly use the litigation process as fair leverage to seek an early settlement of the case.
Trademark Attorney Notes: Potential trademark opposers should do everything that they can to determine the likelihood of success of their case prior to filing a Notice of Opposition. Such due diligence can include conducting a trademark search of similar third-party registrations, conducting an investigation of a trademark applicant’s commercial activities associated with the trademark at issue, and most importantly, review relevant case precedent of prior U.S. Trademark Trial and Appeal Board decisions.