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.”
Clearly, “Damaged” is a word that is vague and subject to interpretation – this should not be a difficult threshold to cross. Thus, anyone with a “real” or bona fide interest in the proceeding of the trademark is eligible to oppose it. Merely not wanting the trademark to register is not a good enough reason – the Opposer must somehow personally be affected by the registration of the mark, which very often takes the form of a Likelihood of Confusion claim. Here, the Opposer will argue that the proposed trademark is excessively similar to his trademark and the registration of the trademark will adversely affect his own stake in the mark. Less common but still notable grounds for opposing a trademark include claiming that the mark is descriptive, scandalous, disparaging, primarily a surname, is functional, or the applicant is either not presently using the mark in commerce or lacks the intent to use it in commerce.
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
Critically, it is incumbent on the trademark Opposer to prove any of the above-mentioned claims by a preponderance of the evidence, which reinforces the idea that it is ultimately incumbent on the Opposer, rather than the USPTO, to stop trademark infringement.
TRADEMARK OPPOSITION PROCESS AND TIMELINE
The Trademark Trial and Appeal Board (TTAB) is an absolute stickler for dates and procedural accountability; deadlines must be met and rules must be followed. The following is a high-level summation of the process involved in a Trademark Opposition Proceeding:
Notice of Opposition is Officially Filed: Within 30 days of the trademark’s publication to the Official Gazette, an Opposer submits a Notice of Opposition
Respondent’s Answer is Filed: Once the trademark applicant decides that he/she wants to fight the trademark opposition proceeding, he must submit an Answer to the Complaint within 40 days of the Notice of Opposition. If the trademark holder does not file an Answer, he risks losing his rights to the trademark and the application going Abandoned
Discovery: The Discovery Process is designed to allow each party to elicit relevant information and favorable facts from the opposing party and is kicked off with the requisite discovery conference whereby each side confers and discusses their respective plans for discovery. Fundamentally, the objective of the conference is to facilitate an open discussion about the “nature and basis of the involved claims and defenses, the possibility of settlement of the case or modification of the pleadings, and plans for disclosures and discovery…” TTAB 408.01(a)
Discovery can be a lengthy process, potentially lasting upwards of a year, depending on whether either party files motions to compel discovery of uncooperative opponents. Discovery fundamentally entails both parties gathering evidence from each other that either bolsters or discredits their positions. Forms of discovery are depositions, interrogatories, requests for production of documents, and requests for admissions. Parties can consent to extending it. Alternatively, the TTAB may suspend discovery to allow itself time to rule on a pending motion. When the latter occurs, it may take the TTAB up to five months to rule on the motion in question. If either party wishes for a final and early ruling, discovery may be expedited. Either party also has the option of filing a motion for summary judgment during discovery or once the discovery process is complete.
Testimony Stage: Again, this period is heavily governed by dates and timelines. Principally, the testimony period allows for alternating periods in which each respective side can present the evidence that they have gathered. The plaintiff (Opposer) submits all evidence through a 30 day period and the Respondent has 30 days to submit its own evidence. The plaintiff than has a final 15 days to provide a rebuttal to the evidence supplied by the Respondent.
Oral Arguments: Oral arguments are not necessarily part of every Trademark Opposition proceeding however both sides reserve the right to request oral arguments, which can provide a more compelling medium to support the arguments made in trial briefs.
Trial Briefs: Trial briefs allow for each respective side to present a coherent argument and summation of their positions in alternating fashion. The briefs contain a discussion of the facts of the case, the relevant statutory and case law, affirmative arguments and a rebuttal of the party’s adversary’s arguments. Critically, the facts and arguments contained within the brief must have already been presented (in some form) at the trial and may not involve new information. Each respective party must include an affirmative defense (if appropriate) in its brief or waive the right to the affirmative defense.
First, the Opposer files its brief, then the trademark Applicant files its brief, and then the Opposer is presented with the opportunity to file a rebuttal brief.
TTAB Issues a Decision: Typically, within six months of the evidence being submitted and the trial’s completion, the TTAB will issue a decision and rule in favor of one of the parties. If the losing party is not satisfied with the decision, he/she may appeal to the United States Court of Appeals of the Federal Circuit.
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. In the event that the opposer chooses to withdraw the trademark opposition without a settlement agreement, then the TTAB will enter a judgment in favor of the applicant and the application will continue to registration.
TRADEMARK OPPOSITION LAWYERS: DRILLING INTO THE SUBSTANCE OF THE CASE
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.
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
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.
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
Remember, the TTAB’s authority does not extend beyond refusing a trademark application or cancelling a trademark that has already been registered. Therefore, its power is severely limited in scope and does not entail in any form whatsoever the consideration of whether or not a party may use a trademark. In fact, for the purposes of trademark infringement vis-a-vis injunctions and financial penalties, the TTAB does not care if/how/when a party uses a trademark; the TTAB simply asks, should this party be awarded a trademark. Do not expect the TTAB to award damages, attorney’s fees, or demand that a party stop using a trademark in commerce altogether. TTAB proceedings can last up to two years, but this tends only to occur when there is a suspension in proceedings, discovery and trial dates are extended, or there exits a TTAB administrative backlog.
It is up to the TTAB to set the relevant dates for each part of the proceeding but typically, from the date of the filing of the Notice of Opposition, the defendant (yes, you are now a defendant in litigation!) has 40 days to file a formal answer with the TTAB. Of course, there are certain instances under which the TTAB will grant an extension of time to answer if the defendant can show good cause. In the event that you did not respond to a notice of opposition (or potentially other required information), you will likely receive a Notice of Default which means that because of your inactivity, the TTAB has issued a ruling favorable to the party who has filed the Opposition. This default judgment is very serious indeed and is binding against future trademark applications.
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.
The complex and nuanced rules of the Federal Rules of Civil Procedure along with the idiosyncrasies of trademark law, as governed by the Lanham Aact (15 U.S.C. 1051) mean that trademark litigation is quite simply, very complicated. Speak with a Trademark Opposition Attorney to both discuss whether or not responding to a trademark opposition is worth pursuing and the best legal strategy to ensure that it is a success.
