Trademark Opposition Guide: A Primer
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. Presently, this Trademark Opposition Guide will consider some of the more salient points to contemplate when conducting the “Should I or Shouldn’t I file” analysis.
Trademark Opposition Guide: Cause of Action
The Trademark Act provides a series of Causes of Action, or reasons, for which an individual/company may marshal a trademark opposition case. First, please note that the bar to be a qualified party to file the Trademark opposition is reasonably low: “Any person who believes that he, she or it would be damaged by the registration of a mark on the principal register may file an opposition addressed to the Trademark Trial and Appeal Board.” Clearly, “Damaged” is a word that is vague and subject to interpretation – this should not be a difficult threshold to cross. So, now that we know who may file the opposition, on what grounds can the trademark opposition be filed?
- 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.
Critically, it is incumbent on the trademark Opposer to prove any of the above-mentioned claims by a preponderance of the evidence.
Trademark Opposition Guide: Evidence Rules
We are now in the next phase of this Trademark Opposition Guide. Remember, at the time of the Trademark Opposition motion, the Trademark in question has already posted to the Official Gazette and in the eyes of the Trademark Trial and Appeal Board, is a presumably valid trademark. Therefore, the TTAB requires the Opposer to provide both procedural and indeed substantive arguments, which support the proposition that the trademark should not register.
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
Remember, one of the most common grounds for a Trademark Opposition is the claim that the newly published trademark would create a likelihood of consumer confusion with the Opposer’s existing trademark (under Section 2(d) of the Trademark Act). Well, in this case, the Opposer must actually demonstrate that his mark and its usage in commerce precedes the newly applied for mark. In order to demonstrate prior use, the Opposer may illustrate either earlier trademark use or actual prior registration date.
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.
This Trademark Opposition guide will be the first of many such articles considering how to approach the Trademark Opposition Process and what you need to know.
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