What is Trademark Opposition?

Trademark opposition proceedings are civil litigations before the U.S. Trademark Trial and Appeal Board (TTAB).

Revised December 2, 2024

The following trademark opposition checklist will help you determine whether your company should bring a trademark opposition proceeding against a trademark applicant.

Companies that wish to enforce their trademark rights through TTAB proceedings should take into account the following pre-filing considerations.

Standing (nka “entitlement to a statutory cause of action”)

Standing is a procedural requirement for all potential opposers.  The proper legal term for standing is now known as “entitlement to a statutory cause of action.”

To establish the entitlement to a statutory cause of action, to bring to bring or maintain a trademark opposition, the Opposer must allege two things.  These are (1) a real interest in the outcome of the proceeding together with (2) a claim that it will be damaged by the registration of Applicant’s mark.   This requirement has a liberal evidentiary threshold.  The Board’s main concern is to prevent bad-faith actors or interlopers from bringing an opposition proceeding in bad-faith.  This being said, it is vitally important for an Opposer to plead its entitlement to a statutory cause of action in its Notice of Opposition.  The Opposer must also set forth its entitlement in any dispositive motions, such as a motion for summary judgment as well as its Trial Brief.

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. Priority is a threshold evidentiary issue In a likelihood of confusion case pursuant to Section 2(d) of the Trademark Act.  If an Opposer does not plead that it has trademark rights that are prior to the Applicant’s rights, then the Notice of Opposition is subject to either dismissal or judgment against the Opposer.  The opposer must also provide proof of its prior (senior) trademark rights at the trial stage of the opposition proceeding.

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 corporation, or another entity that it controls.

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.

Causes of Action

An Opposer has numerous statutory grounds available to it to oppose a trademark application.  More than one ground can be alleged as part of the Notice of Opposition if there is a legal justification to do so.   Some of the most popular grounds for a Notice of Opposition include the following:

1. 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 Factors.

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

(c) similarity of the parties’ trade channels.

Additional factors include:

(d) the purchasing conditions and whether the purchase is a “sophisticated” customer

(e)  fame of the Opposer’s Mark

(f) the number of similar marks for the same or related goods

(g) actual confusion

(h) length and condition of concurrent use without confusion

2.  Mere descriptiveness

A trademark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, or purpose of the goods or services to which it relates.  Examples of merely descriptive Marks include:

  • BED & BREAKFAST REGISTRY (for lodging reservation services)
  • SOFT N CHEWY for cookies
  • COASTER CARDS (for coasters used in direct mail campaigns)
  • WORLD’S BEST BAGELS (for bagels)

For further information on mere descriptive marks, see our related article here.

Additional grounds that can be asserted to oppose a trademark application are below:

– the applicant did not have a bona-fide intent to use its Mark on the applied for goods at the time it filed its Application under Section 1(b) of the Trademark Act;

– there was no bona fide use of the Applicant’s Mark prior to its filing of a use-based trademark application under Section 1(a) of the Trademark Act;

– the applicant’s Mark is geographically deceptive;

– the Applicant committed fraud on the Trademark Office with regard to false and deliberate statements that it asserted in its application;

– the Applicant’s Mark is generic of the goods

– the Applicant is not, and was not, the rightful owner of the trademark at the time it filed its application;

– the term that Applicant seeks to register fails to function as a trademark (i.e., an indicator of source)

Discuss Your Trademark Opposition Now

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.

To discuss your trademark opposition or brand enforcement strategy, contact us now.