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:
- 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.
- 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.
- 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.
- 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.
- 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.
- 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.