Trademark Opposition Proceedings: the Basics

If a mark published for opposition is of concern to an owner of an already registered mark, the United States Patent and Trademark Office (USPTO) offers trademark opposition proceedings as a protection tool in the form of pausing the registration process. This process is designed to protect the interests of businesses and consumers alike.

It’s a “tale as old as time.” You start a business, file a trademark application to register the name, logo, and slogan, and eventually, develop brand recognition. If you’re successful, you are going to start seeing some competitors do similar things. Imitation can be the highest form of flattery, but it can also expose your brand to manipulation. This blog will guide you on how to tackle the trademark opposition process.

Trademark Opposition Proceedings as a Trademark Enforcement Tool 

The basics of the opposition process are pretty simple. Trademark owners have many ways of protecting their brand ranging from cease and desist letters to federal litigation. But if you have a competent portfolio management strategy, then you have a trademark attorney or someone in-house, constantly monitoring your brand’s exposure to possible infringement.

When you apply for trademark registration, the USPTO will check to make sure that there are no similarities to existing trademarks. Sometimes, though, things slip through and are published in the official trademark gazette. This is where the burden shifts, usually on the trademark owner, to enforce their trademark rights against a possible infringement. The mechanism to oppose is limited to applications for registration in the principal register.

How is Trademark Opposition different from Trademark Cancellation?

There are two types of proceedings when it comes to trademarks: opposition and cancellation. Cancellation proceedings can only happen after a trademark is registered. On the other hand, opposition proceedings usually happen before a trademark is registered – more specifically within 30 days of the applied-for mark being published in the official gazette.

As a trademark owner, you have 30 days to file a notice of opposition after you discover a trademark infringement. An initial extension of time through the filing of a notice of opposition usually grants you an additional 30-day opposition period and costs no extra fees. Since the notice of opposition is a formal legal proceeding, you must keep in view all the deadlines, the risks, and the requirements of this process. Your trademark opposition lawyer will be able to guide you much better in this regard.

Grounds For Filing An Opposition

The most common ground to file a trademark opposition under the Trademark Act 1946 is the likelihood of consumer confusion. The confusion does not need to be possible, actual, or inevitable. The only thing the board at the trademark trial and appeal board (TTAB) will be looking at is whether the conflicting mark would confuse a considerable amount of consumers.

Other grounds to oppose the trademark would be:

• The mark is merely descriptive.
• The mark is generic.
• Dilution – a fancy way of saying: “This applied-for mark weakens my registered mark”
• The mark is functional for its goods and/or services.
• No bonafide intent to use the mark in commerce
• Fraudulent intentions

A complete list of grounds of opposition and the proceeding procedure can be found in this link.

Difference between a TM Opposition vs TM Infringement Proceedings

You might think both of them kind of sound like lawsuits. Are they different?

A relief granted by the TTAB is limited to rejecting the applicant’s mark from being registered. However, a TTAB decision is often a deterrent for the applicant and can have a preclusive effect in civil proceedings to receive injunctive relief. Opposition hearings are usually less expensive than a trademark infringement lawsuit.

When the TTAB looks at the conflicting marks, they often use a test that is favourable to the person who opposes the mark. The board looks at the mark as it is applied, instead of how it will be used in the marketplace. This is a narrower assessment than the one the federal court applies.

This is not to say an opposition hearing won’t last long. It can. It can also leave your brand vulnerable to third-party actions and lead to future lawsuits.

Before filing a notice of opposition, it is always important to note the opposer’s realistic expectations with specific desired outcomes. The likelihood of success should dictate the opposer’s strategy and any possible settlement alternatives should be reviewed. Common settlement options include coexistence agreements, amendments to goods or service descriptions, geographical restrictions, etc.

Ways to Defend a Notice of Opposition (Common Defenses) 

There are many ways to defend a notice of opposition, but the opposer’s best-case scenario is for the applicant to abandon the application after the filing of the notice of opposition. However, a good strategy includes the expectation of a response, narrowed down to the applicant’s best arguments against the grounds for the opposition.

THE APPLICANT’S MOST COMMON DEFENSES

• Rebuttal of the asserted grounds: Each ground requires a methodical approach for rebuttal. For example, a likelihood of confusion rebuttal must include:
  • Evidence of first use.
  • An argument stating the opposer’s mark is weak and entitled to none or limited protection.
  • An argument stating the opposer’s mark is similar to others in a crowded marketplace.
  • Evidence, if available, that the parties have coexisted for a long period without any evidence of confusion.
  • Evidence on how the marks are dissimilar in appearance/sound/connotation and how the goods/services are unrelated.
• Acquired distinctiveness / Secondary meaning: This is specifically a defence to the grounds of descriptiveness, deceptive descriptiveness, geographical descriptiveness, and surname. The applicant will have to prove the applied-for mark has acquired secondary meaning through evidence.
• If an applicant owns a registered trademark that is the same or essentially the same mark as the applied-for mark and also has the same goods and service description, they can use the Morehouse defence.
• The applicant also has the option to file a counterclaim action in the way of a cancellation proceeding. If the basis for standing for an opposer comes from the ownership of a prior registered trademark, the applicant can then challenge the validity of the opposer’s registration by filing a cancellation proceeding. Please feel free to watch my video on cancellation hearings here. 

A Keynote 

It all begins with a competent portfolio management strategy. This is the foundation of any successful investment plan and without it, you are more likely to fail than succeed. However, with a sound strategy in place, you can maximize your chances for success.

As an applicant, you can save time by conducting a proper search and clearance through a trademark attorney. As an opposer, you can implement an enforcement strategy that includes monitoring and swift action when needed.

As you can see, trademark opposition proceedings are a powerful tool that businesses can use to enforce their trademarks and protect their brands. However, these proceedings can be complex and it is important to have a strong understanding of the process before moving forward. If you would like more information or want to discuss your specific situation, please don’t hesitate to contact us. We would be happy to schedule a discovery call with you and help you determine the best course of action for protecting your brand. Thanks for reading!

If you have any questions about Trademark Opposition Proceedings and would like help getting a better understanding of it, we’d be happy to schedule a discovery call with you. During this call, we can discuss your situation in more detail and come up with a plan tailored specifically for you.

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