TRADEMARK OPPOSITIONS OCCUR AFTER TM FILINGS
After filing a trademark application with the USPTO, the applicant starts the long and arduous waiting period during which the mark undergoes an examination from a trademark examining attorney to establish that the trademark is both sufficiently distinct and does not infringe on the existing trademark rights of a prior applicant. After around 3-4 months, the applicant will either receive an office action outlining certain defects within the trademark application and how it may be cured or, if the trademark does not have any issues, the examining attorney will publish the trademark to the Official Gazette for “Opposition”.
WHAT IS A TRADEMARK?
A trademark is a source identifier – when an individual sees a trademark attached to a good/service, the viewer immediately understands the source of that good/service, or the company, which produced it. A trademark may be a word, logo, phrase, sound and serves to distinguish a product from those of the company’s competitors. Assuming that a trademark is sufficiently distinct and does not infringe upon an existing trademark already registered in the USPTO (by being too similar to an existing mark or representing goods/services which are too similar to those of an existing mark), the trademark will be eligible for registration in the USPTO.
TRADEMARK OPPOSITION PERIOD BEGINS AFTER THE MARK IS PUBLISHED TO THE OFFICIAL GAZETTE
The USPTO recognizes that just because an examining attorney determines based on a preliminary review that a trademark is suitable for registration, that doesn’t necessarily mean that relevant third parties with an interest in the trademark should not have the right to oppose the mark’s registration. The purpose of publishing the mark to the Official Gazette, which occurs every two weeks, is to provide a 30 day trademark opposition period where third-parties can review published trademarks and if they have a real and bona fide interest in the matter, can oppose the registration of the trademark. Very often, trademark holders will hire a trademark monitoring service to periodically check the Official Gazette and flag any pending trademarks that might infringe on the senior holder’s mark so that the senior has the chance to oppose the mark.
CAN ANYONE OPPOSE A TRADEMARK?
The USPTO is concerned with balancing the competing interests of protecting the trademark holder from unnecessary harassment while still providing a legitimately concerned party with the opportunity to oppose the trademark.
The Trademark Act provides a series of Causes of Action, or reasons, for which an individual/company may bring a trademark opposition case. The bar to be a qualified party to file the Trademark opposition is admittedly fairly low:
“15 U.S.C. § 1063(a) [Trademark Act § 13(a)] Any person who believes that he would be damaged by the registration of a mark upon the principal register, including the registration of any mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may, upon payment of the prescribed fee, file an opposition in the Patent and Trademark Office, stating the grounds therefor, within thirty days after the publication under subsection (a) of section 1062 of this title of the mark sought to be registered.”
An opposer must establish entitlement to bring the proceeding, including a real interest and a reasonable belief of damage consistent with the applicable legal standard. Merely disliking a proposed trademark is insufficient.
The opposer must also plead and prove a recognized ground. Depending on the facts, grounds may include priority and likelihood of confusion, mere descriptiveness, genericness, functionality, false suggestion of a connection, or qualifying dilution claims. Nonuse and lack of bona fide intent claims depend on the filing basis and the relevant facts.
MOST COMMON REASONS TO FILE A TRADEMARK OPPOSITION
So, now that we know who may file the opposition, on what grounds can the trademark opposition be filed? Below is a list of the most commonly cited grounds for filing a trademark opposition:
- The trademark in question, when used in conjunction with the applied for goods/services may lead to consumer confusion with the Opposer’s trademark (whether the Opposer’s trademark is registered or merely used in commerce).
- The Applicant, contrary to the required trademark registration provisions, never had a bona fide intention to actually use the mark in commerce when the trademark application was submitted.
- The Applicant’s mark is not sufficiently distinct, given the goods/services sold under the trademark and is consequently either generic or descriptive.
- The Trademark has not met the bona fide, use in commerce requirement prior to submitting the 1(a) filing despite claims to the contrary.
- Registration of the trademark will lead to dilution by blurring or dilution by tarnishment of the Opposer’s trademark
- Registration of the trademark would inappropriately suggest a false connection, origin, or sponsorship
The opposer bears the burden of proving its asserted grounds under the applicable evidentiary standard. The TTAB decides whether registration should be permitted; it does not determine infringement liability or award marketplace remedies.
TRADEMARK OPPOSITION PROCESS AND TIMELINE
A trademark opposition follows the TTAB’s procedural rules and the schedule established for the particular case. The Board’s institution order and subsequent orders control the deadlines.
Notice of Opposition: An opposition generally must be filed within 30 days after publication or within a timely obtained extension of the opposition period.
Answer: After the Board institutes the proceeding, the applicant must respond by the deadline stated in the institution order, unless that deadline is properly changed. Do not calculate the Answer deadline solely from the date the Notice of Opposition was filed. Failure to respond can lead to default proceedings and judgment against the applicant.
Discovery: The parties generally must conduct a discovery conference, exchange required disclosures, and complete discovery according to the Board’s schedule. Discovery may include interrogatories, document requests, requests for admission, and depositions. Extensions, suspensions, and motions can affect the schedule; there is no guaranteed duration for discovery or motion decisions.
Trial and Evidence: TTAB trials ordinarily proceed through written submissions and testimony rather than a conventional courtroom trial. Under the standard schedule, the opposer generally has a 30-day testimony period, the applicant has a 30-day testimony period, and the opposer has a 15-day rebuttal period. The applicable order controls.
Trial Briefs and Oral Hearing: After the trial periods, the parties submit briefs according to the applicable rules and schedule. Briefs argue the case based on the properly admitted record; they are not an opportunity to introduce new evidence. Affirmative defenses generally must be properly pleaded and preserved rather than raised for the first time in a trial brief. An oral hearing may be requested under the applicable rules.
Decision and Judicial Review: The Board issues its decision after the case is ready for determination. There is no guaranteed six-month decision period. Subject to the applicable requirements, a dissatisfied party may seek review through an appeal to the U.S. Court of Appeals for the Federal Circuit or a civil action in an appropriate federal district court. The routes have different procedures and consequences, and strict deadlines apply.
HOW DO I FILE A TRADEMARK OPPOSITION
Critically, Trademark Oppositions do not happen in a Federal Court but rather at the level of the Trademark Trial and Appeal Board (TTAB), which is an arm of the United States Patent and Trademark Office (USPTO). Thus, the TTAB does not have jurisdiction to consider any associated damages that may arise from trademark infringement but rather only establishes the merits and legitimacy of granting or denying a federal trademark registration.
In order to oppose a trademark, one must file a Notice of Opposition with the TTAB. The Notice of Opposition must state and articulate both the Opposer’s standing to file the opposition and the substantive grounds for the opposition. Typically, the applicant will have 40 days to provide an answer to the opposition and the Trademark Trial and Appeal Board (TTAB) will provide a series of deadlines accounting for each stage of the opposition proceeding.
WHAT DOES A TRADEMARK OPPOSITION CONSIST OF?
While a Trademark Opposition Proceeding does not occur in Federal Court, it has many of the same procedural aspects of a lawsuit including pleadings, discovery, and trial. Pleadings are fairly straightforward with the Opposer making an initial claim as to why the mark should be denied followed by the applicant’s response to the motion. The discovery phase, conversely, like any lawsuit, is an extensive and resource-consuming process and consists of requests for production of documents, admissions, written interrogatories, depositions etc. The trial phase of the proceeding is where both sides will make their respective cases in full substantive strength. Because, going through an entire trademark opposition proceeding can be so tremendously expensive (for both sides), it is very often the case that the two parties will reach a settlement before the proceeding becomes too advanced.
HOW MUCH DOES A TRADEMARK OPPOSITION COST?
It is no secret that the litigation process can become very expensive with the costs quickly getting out of hand. For a trademark opposition proceeding that ultimately goes to trial after several years of intensive discovery, motion practice and depositions, attorney’s fees and other costs will be heavy.
In an ideal world, the opposition will settle quickly long before a trial ever takes place and before lawyers are paid too much of your money but that may not be the case.
Ultimately, asking how much aTrademark Trial and Appeal Board (TTAB) proceeding will cost is akin to asking how much a House costs. Obviously, not all houses are created equally and a 15 room mansion in Los Angeles will cost substantially more than a modest two-bedroom home in Arkansas. Should you find yourself in a TTAB proceeding, carefully consider how much you can reasonably afford to spend and if such an expense would be worthwhile. TTAB proceedings can easily get into the Six Figures and consequently, settling a trademark opposition and avoiding high litigation costs should be your goal.
Despite the vast range in financial implications for any given TTAB case, please consider the following ESTIMATES: TTAB Oppositions/Cancellations can cost between $5,000 and $7,500 if settlement is reached between the discovery conference and the beginning of the discovery period. If this does not occur, discovery can cost between $25,000 and $60,000. A trial for a trademark opposition costs between $20,000 and $45,000. Motions will again vary according to complexity but can may between $3,000,00 and $10,000 and the final brief can be in the range of $10,000 and $15,000.
Again, please seriously consider a Settlement Agreement as early as possible in the process. Settlement agreements may come in many forms, including an arrangement whereby the applicant agrees to abide by time/place/manner restrictions related to their use of the trademark, to restrict he goods or services identified, and/or to withdraw the application entirely. The effect of withdrawing an opposition depends on its procedural stage and the applicant’s consent where required. Withdrawal after an Answer has been filed generally requires the applicant’s written consent to avoid dismissal with prejudice. Ending the opposition does not itself guarantee registration; the application must still satisfy any remaining USPTO requirements.
TRADEMARK OPPOSITION LAWYERS: DRILLING INTO THE SUBSTANCE OF THE CASE
Approval for publication means that the application has passed the examining attorney’s review at that stage. It does not create the statutory presumptions associated with a federal registration or prevent a qualified party from challenging registration. The opposer must establish entitlement to bring the proceeding and prove the elements of its asserted grounds.
Standing
Recall from earlier in this Trademark Opposition Guide, we learned that, “Any person who believes that he, she or it would be damaged by the registration of a mark on the principle register may file an opposition addressed to the Trademark Trial and Apppeal Board.” The Opposer must demonstrate with sufficient reason and conviction that he/it does indeed have a legitimate stake in the outcome of the prospective trademark’s registration by illustrating how he will be damaged if the registration proceeds. If the Opposer cannot establish standing, the action will be dismissed before any of the substantive arguments can be raised.
Existing Trademark Priority Rights
In a priority and likelihood-of-confusion claim, the priority analysis depends on the parties’ pleaded rights and supporting evidence. Relevant dates may include qualifying use dates and application filing dates that support constructive-use priority. In some circumstances, an opposer’s valid pleaded registration removes priority as an issue for the covered goods or services. Comparing registration issue dates alone is not a sufficient priority analysis.
Substantive Arguments: Making the Trademark Opposition Case
If the Opposer successfully demonstrates that he has standing and is in fact a legitimate Opposer, he will need to move on to the more tenuous part of the case, which is proving, the various elements of the charge. In the event that the main charge of trademark opposition case is that the newly filed trademark is merely descriptive (Section 2(e) of the Act), the Opposer will need to generate an explanation as to why the mark is merely descriptive. Remember, trademark law requires a mark to be sufficiently “distinctive” and if a trademark is synonymous with a specific feature of the goods/services sold under the trademark, it is said to be a descriptive trademark and therefore ineligible for registration (unless the mark has achieved secondary meaning). Alternatively, the Opposer may mount a likelihood of confusion argument and will be required to demonstrate how under the 13-part test outlined in the In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) case, the total commercial impression of the trademark would lead to consumer confusion.
HOW TO RESPOND TO A TRADEMARK OPPOSITION PROCEEDING
Remember, Trademark Opposition proceedings along with all of the other proceedings (trademark cancellations etc.) available under the jurisdiction of the Trademark Trial and Appeal Board (TTAB) are akin to real, bona fide lawsuits filed in federal court. There are motions, discovery, and trial and as such, a trademark opposition proceeding should be taken very seriously and with the understanding that they can be time-consuming and costly indeed.
The TTAB’s primary purpose is to decide whether or not a given trademark deserves trademark registration in the United States Patent and Trademark Office (USPTO). After granting preliminary approval of a trademark, it is published to the Official Gazette for 30 days which allows any individual/company the opportunity to Oppose to the registration of the mark if the Opposer can demonstrate that he has standing (legitimate interest in the case) and a substantive argument. If you are on the receiving end of a Trademark Opposition, you should consider strongly how you can attack either of these two preliminary requirements.
KEY ELEMENTS IN RESPONDING TO A TRADEMARK OPPOSITION
The TTAB determines rights to federal trademark registration. It does not award infringement damages or issue injunctions stopping marketplace use. However, evidence concerning use, priority, and marketplace conditions can be important to the registration issues before it. A proceeding may last more than two years, depending on its complexity, motions, suspensions, extensions, and other circumstances.
If your application is opposed, review the Board’s institution order and respond by its assigned deadline unless that deadline is properly changed. Failure to respond may result in a notice of default. A notice of default is not itself a final default judgment; it provides an opportunity to respond and show why judgment should not be entered. Missing that opportunity can result in judgment against the applicant and refusal of the opposed application. Any effect on later applications depends on the judgment and the circumstances.
When filing the answer to the opposition, there are several fundamental things to keep in mind. Read the Complaint very carefully and make an honest assessment, with the help of a trademark litigation attorney, of the strength of the complaint and the plaintiff’s likelihood of prevailing. It is incumbent on the plaintiff in the Notice of Opposition to provide an explanation as to why he has standing (how the registration of the trademark will be adverse to his own interests) along with a more detailed substantive argument which calls into question the defendant’s (that’s you!). Can you find any holes in the complaint (the registration of the trademark wouldn’t affect him one way or another)? Should the plaintiff’s standing be called into question? Is the substantive argument weak (Likelihood of confusion would be a preposterous outcome of the mark’s registration)? If the complaint seems weak and the case winnable, it might very well make sense to push forward to proceed with a response.
Submit an Answer to the complaint which both satisfies the procedural rules of the TTAB, which can be found in the TBMP, and addresses the substantive arguments set forth in the complaint. Remember, this is litigation so there are formal and meaningful rules which must be followed. What is interesting about the format of the Answer is that while there are no strict structural guidelines to a proper response, there are certainly best practices. Each paragraph in the complaint must be addressed separately and will typically entail either denying or admitting (or claiming a lack of sufficient knowledge) to the facts contained in each respective paragraph of the complaint.
TRADEMARK OPPOSITION ATTORNEYS
Perhaps most importantly, it is critical to recognize the immense time, money and resources involved in prosecuting a trademark opposition case and one should, therefore, be very careful to make an honest assessment of the likelihood of winning before commencing suit. Of course, none but the most prophetic among us can guarantee an outcome but there are at least enough markers and guideposts to look to in order to evaluate one’s chances of success or failure.
To oppose an application, file a Notice of Opposition with the TTAB within the applicable opposition period and pay the required fee. The pleading must establish the opposer’s entitlement to bring the proceeding and allege a legally sufficient ground for opposition. After institution, the Board issues an order setting the applicant’s response deadline and the proceeding’s schedule. Follow that order and any later changes rather than calculating deadlines solely from the filing date of the opposition.
