Section 2(d) of the Lanham Act
Section 2(d) of the Lanham Act is perhaps the most important and widely cited section in all of trademark law. This is the statutory basis for which a trademark owner may claim trademark infringement against a junior owner and indeed many rejections made by the United States Patent and Trademark Office (USPTO) as well as for many trademark oppositions filed each year are on the basis of 2(d), Likelihood of Confusion. Section 2(d) states (among other things) that a trademark application that is confusingly similar to a pre-existing trademark registration and involves related goods and/or services should be denied. Opposers to a trademark application must prove in the affirmative that a series of factors have indeed been met in order for such an opposition successful. The point of Trademark Monitoring is to flag the existence of prospectively infringing marks before it is too late
Proving Likelihood of Confusion
An opposer needs to be able to prove standing and priority before even thinking about crafting their likelihood of confusion argument. If either of these two requirements are not met, the USPTO will deny the trademark opposition.
Should the Trademark Monitoring exercise flag a prospectively infringing trademark and you determine that you would like to oppose the registration of the application by filing an opposition with the Trademark Trial and Appeal Board (TTAB), you will need to show that you have standing to file a complaint, which is to say, that you are a party with an interest in the case and deserve to be heard.
Standing must be proven in every trademark opposition and cancellation. A trademark owner establishes standing by showing that they both have a legitimate interest in the outcome of the proceeding and will be damaged if the proceeding does not end in their favor. To establish standing in a trademark opposition case, an opposer can show their pre-existing trademark registration. Alternatively, if they filed an application that was refused because the applicant’s application had already been submitted, the opposer may submit the later-filed application into evidence. Additionally, use of the opposer’s mark in commerce can be shown to establish standing even if the opposer has not filed any applications with the USPTO because of common law rules.
In order to succeed in a trademark opposition, an opposer must prove Priority of Use – that the senior holder has in fact used the mark in interstate commerce BEFORE the junior older. There are multiple ways to demonstrate Priority, perhaps the easiest being by way of producing ownership of a pre-existing registration. Although this method is easily the least burdensome, an opposer may also provide evidence of actual use or showing use comparable to trademark use to prove priority through a preponderance of the evidence. Again, should you pursue Trademark Monitoring, you will very likely be able to meet this particular step in the process.
Trademark Monitoring Will Detect Marks which Trigger Likelihood of Confusion
The bulk of what the opposer needs to prove stems from the requirement to show that the applicant’s mark is confusingly similar when compared to the opposer’s mark. The USPTO uses the test laid out in the seminal In re E.I. du Pont de Nemours & Co. case. However, in practice, the USPTO has shown that it mainly considers only several of these factors in a likelihood of confusion analysis. These Dupont factors are the similarity of sight, sound, and meaning of the marks as well as whether the goods and/or services are related. The number of similar third-party registrations that can be found on the register in addition to the strength of the opposer’s mark round out the important considerations for the USPTO. Ultimately, a solid Trademark Monitoring strategy will use technology and human insight to identify junior trademarks that bare a “likelihood of confusion” to a senior mark by catching these Dupont Factors in real time and comparing and contrasting the similarities between the marks according to the Dupont framework.
PROHEAR Headphones: A Modern Example
This year, a trademark application for headphones and related goods was cancelled due to a successful opposition. The application was for the mark PROHEAR and the opposer owned the mark PROTEAR, which is also used for headphones and other goods.
[Active Trademark Monitoring of the PROHEAR mark would undoubtedly alert the owner of PROHEAR to the existence of PROTEAR and provide PROHEAR with the opportunity to develop a strategy to oppose PROTEAR.]
Ultimately, the Trademark Trial and Appeal Board (TTAB) agreed that the opposer (PROHEAR) did indeed have standing because of its prior registration of the PROTEAR mark. The TTAB found that priority was established because the opposer’s application was filed almost two years before the applicant’s application was filed.
In its likelihood of confusion analysis, the TTAB concluded that the goods were related because the applicant intended to use the mark for audio headphones and the opposer used their mark for headphones. Both parties listed many goods in their applications and some of them were identical to each other. Overall, the TTAB decided that the marks were similar in sight, sound, appearance, connotation, and commercial impression. Therefore, the opposer’s trademark opposition was successful.