Updated: January 2022
U.S. Trademark Opposition: FAQ
A trademark opposition is a contested proceeding before the U.S. Trademark Trial and Appeal Board. Any third-party may oppose the trademark application of another party. An opposition may be filed only when the subject application is published in the Official Gazette of the U.S. Patent and Trademark Office. The time to file an opposition is within 30 days of publication. Extensions of time to file an opposition may be granted for an additional 30 days upon request, and up to 90 days for good cause shown.
Step 1: the basics
Before filing a trademark opposition, be sure to assess whether you will be likely to prevail. By doing so, your company can potentially save thousands of dollars in attorney’s fees and avoid subjecting your brand to unnecessary risks. The determination of whether to file a trademark opposition to contest a third-party’s trademark application is not always simple. Merely pleading the grounds for opposition is not enough; the Opposer must prove the elements of its claims by a preponderance of the evidence.
(a) Burden of Proof. An Opposer must first establish its standing (aka entitlement to statutory cause of action) to bring and maintain a trademark opposition before the Trademark Trial and Appeal Board. Standing is satisfied when the Opposer shows that it has a legitimate interest in the outcome of the proceeding (i.e., it is not a mere intermeddler) and that it will be damaged should the registration issue. If the Opposer cannot establish its standing, then the action will be dismissed and the substantive grounds for the opposition will not be considered. [Editor’s Update: whether a party has “standing” is now viewed under the analysis called “entitlement to bring a statutory cause of action]. See, TBMP Section 309.03(b).
(b) Causes of Action. Under the Trademark Act, there are numerous grounds under which to bring an opposition. Once an Opposer meets its procedural threshold requirement of cause of action, the elements of proving its case differ depending on the specific grounds of the Opposition. Representative causes of action may include the following:
1. Likelihood of confusion. This is established if the applicant’s mark, when used in connection with Applicant’s applied for goods or services, is likely to cause confusion with Opposer’s previously used or registered mark. To establish a Section 2(d) case for likelihood of confusion, the Board undertakes the 13-part test found in the case In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). A discussion of this test may be found here. The most important factors are as follows:
- similarity of the trademarks in sight, sound, meaning, and commercial impression;
- similarity of the parties’ goods and services contained in their respective registrations and application; and
- similarity of the parties’ trade channels
It is important to note that the USPTO also considers certain goods and services to be related for purposes of likelihood of confusion. While there is no per se rule, the Board has found in certain cases the following goods and services to be related:
- Restaurant services and food items (particularly if the restaurant is known for serving the type of particular food);
- Apparel and fashion accessories; and
- health and wellness goods and online retail services (if the ecommerce services feature health and wellness products)
Helpful hint: be sure to be familiar with the likelihood of confusion factors and types of goods and services that are typically found to be confusingly similar.
2. Mere descriptiveness. This element is shown if the Applicant’s mark is merely descriptive of its goods or services. To establish that an Applicant’s Mark is merely descriptive pursuant to Section 2(e) of the Act, the Opposer must show that Applicant’s mark merely describes a feature, characteristic, ingredient, purpose, or function, or use for the applied for goods. A discussion of the test for mere descriptiveness may be found here.
Examples of trademarks that have been found to be merely descriptive of the goods and/or services include:
- Day Fasting Diet for nutritionally prepared meals
- Cold and Creamy for ice cream
- Corn Thins for corn cakes
- Aspirina for analgesic products
- Hot Karate for physical fitness instruction
Helpful hint: evidence of mere descriptiveness of a trademark may be found in dictionary definitions, internet print-outs, and consumer service.
3. Lack of bona fide intent to use. This occurs when it is shown that the Applicant did not have a bona fide intent to use its mark in commerce at the time of filing an intent to use application under Section 1(b) of the Trademark Act.
4. No bona fide use. this is a challenge to applications filed under Section 1(a) of the Trademark Act where the opposer claims that applicant had no bona fide use in commerce of its mark prior to its filing its use-based application.
Practice Tip: Companies and in-house counsel who are considering filing a notice of opposition can discuss the implications of doing so with the author. In addition to filing a notice of opposition, there are other alternatives that can be discussed depending on the business goals of the client. Being fully apprised of these options will serve the interests of the brand owner client.