INTRODUCTION

This three-part article provides an overview of trademark opposition proceedings, the role they play in protecting one''s trademark rights, practical considerations in deciding whether to oppose and alternatives for preventing registration of trademarks that can potentially damage a trademark owner''s rights.

Part I will cover U.S. opposition process and procedure. Part Il will cover practical considerations in deciding whether to oppose. Part Ill will cover alternative cost-effective strategies other than filing oppositions.

PART 1- OPPOSITION PROCEEDINGS UNDER THE US.TRADEMARK ACT

A) Overview of Proceeding:

Opposition proceedings in the U.S. Patent and Trademark Office (“USPTO) can be an effective means of preventing a competitor from registering a trademark that can cause damage to a trademark owner. Because opposition proceedings can be complex, time-consuming and expensive, it is important to have a clear understanding of the procedural steps in an opposition in order to make a careful, informed decision on whether to initiate them.

It is essential to understand that unlike in most other countries,trademark rights- i.e.. the right to exclusive use of a trademark in the U.S. is established by “use of a mark in connection with the offering of a product or service “in commerce” in or with the United States, and not by ownership of a federal trademark registration, Although federal registration is highly desirable because of the procedural and substantive benefits that arise from registration, ownership of a federal trademark registration is not essential.

It is also equally important to recognize that the sole legal issue in an opposition proceeding is whether the applicant is entitled to a registration of its trademark.

Opposition proceedings are brought before the Trademark Trial & Appeal Board (“ TTAB), an administrative tribunal within the USPTO that decides adverse proceedings. The TTAB only has the authority to prevent registration of a mark, and not to prevent its use. Only a federal court can stop a trademark from using used by issuing an injunction.

After the application process is complete and a trademark is approved for registration, the USPTO publishes the mark and related application information to provide public notice of the application and an opportunity to oppose A party has 30 days to initiate an opposition proceeding after publication of the applied-for mark. or alternatively to request for 30-davsextension of time to oppose in order to provide additional time to decide whether to oppose the application. Further extensions of time for good cause are available. but at some point. within the 180 days of the maximum amount of time to extend, a decision must be made on whether or not to oppose.

Opposition proceedings are governed mainly by the U.S. Federal Rules of Civil Procedure. These are the rules that govern litigation in the federal courts, including actions for trademark infringement The proceedings in the US, consist of five distinct phases.

1) Pleadings

An opposition is initiated by the Opposer filing a Notice of Opposition with the TTAB, which sets forth, in simple terms, the basis of its standing to oppose and the reasons for opposing the trademark application- i.e. How the Opposer will be damaged if the opposed application is allowed to become register.

The Applicant is afforded a period of forty (40) days in which to submit a short, concise response to each of the claims made in the Notice of Opposition by either affirming, denying, or claiming a lack of knowledge as to the truth of the Opposer''s Claim. In addition, the Applicant can include any affirmative defenses or counterclaims.

2) Discovery

The parties in an opposition proceeding may engage in the same type of discovery as litigants in federal court . This includes requests for documents relevant to the proceeding, interrogatories that must be answered under oath, requests for admission of facts or legal 1ssues. and the taking of testimony depositions of employees of the other party or testimony of third parties witnesses.

The initial discovery phase of opposition proceedings is 180 days, however, it can be, and often, extended by agreement of the parties or for good cause. Discovery typically lasts from six months to one year. or in some cases. even longer. Moreover, the discovery process can be burdensome on the parties. as it requires searching for and locating potentially numerous documents, responding to discovery requests. having witnesses testify at depositions. and otherwise complying with the rules for discovery.

As a result discovery in TTAB oppositions can involve significant expense. While there are ways to minimize discovery expenses if the parties agree to certain limitations or expedited procedures. a party 1s entitled to full-blown discovery. and many choose to do so whether in prosecuting an opposition or defending it.

3) Trial

After discovery is complete, the parties will have a set period of time to prepare and submit evidence for the TTAB to consider in making its determination on whether or not to sustain the opposition and refuse registration of the applied-for mark Notably, this will often entail another round of depositions this time for obtaining" trial "testimony, as opposed to discovery. (One main difference between opposition proceedings and federal litigation is there is no live testimony or trials in a courtroom All trial evidence is submitted on paper, including trial testimony deposition transcripts, to the TTAB for its consideration and determination.

4) Legal Briefing

After all of the evidence is submitted, counsel for the parties submit legal memoranda. The brief is a party''s opportunity to present, in a systematic and coherent manner, and in a form which is permanent and can be referred to, a discussion of the facts in light of the law, its strongest affirmative arguments, and a rebuttal of its adversary''s arguments.

5) Oral Hearing

After the end of the briefing period, the parties are afforded the opportunity to present live oral argument before the TTAB to the panel of three judges who will decide the opposition.

B) Legal Grounds for Opposing:

There are a number of legal grounds on which to base an opposition proceeding, However, the most common ground is the applied-for mark is likely to cause confusion with the trademark owner''s mark for its goods and services . (See Exhibit “A” for a complete list of grounds for opposition). Also, it is important to note that in order to bring an opposition proceeding. the trademark owner need not own a registered mark. A trademark owner can bring an opposition proceeding based on common law rights that it owns in the mark or a business name. as a result of prior use of the mark in US commerce.

In deciding whether an opposition should or should not be sustained on the grounds of likelihood of confusion. the TTAB considers a number of factors as shown in Exhibit “B” Not all of these factors need to be considered in every opposition proceeding, nor do the factors need to be accorded equal weight Each case is considered according to its unique facts and the evidence submitted by the parties. However. in most cases. the paramount factors for consideration are numbers: 1) the similarity of the marks, and, 2) the similarity of the goods or services of the parties. Also note that the thirteenth factor allows the TTAB to consider anything that it deems probative of a likelihood of confusion.

Oppositions are decided by a panel of three judges who issue a written decision (also known as an “opinion’). TTAB decisions are either unanimous or by a majority (2-1) vote. Dissenting judges can and occasionally do file their own opinions. The administrative judges are very knowledgeable in trademark law. While the length of time from the filing of a Notice of Opposition to a final decision on the merits varies from case to case, oppositions that proceed through a trial typically last 18 months to 2 years,or longer.

C) Conclusion

According to recent data from the USPTO, approximately 57% of opposition proceedings brought have been successful, Therefore. in many instances it can be beneficial for a trademark owner to oppose an applicant''s trademark to prevent registration of the mark. Upon careful consideration of the foregoing criteria, and in consultation with trademark counsel, a prudent decision can be made as to whether to oppose a trademark application in the TTAB.

Exhibit“A”

The most typical grounds asserted in U.S trademark oppositions

1. Immoral or scandalous matter

2. Deceptiveness

3. False suggestion of a connection

4. Geographic indication which, if used on or in connection with wine or spirits, identifies a place other than the origin of the goods

5. The mark consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof

6. The mark consists of or comprises a name, portrait, or signature of a6living individual without written consent, or the name, portrait, or signature of a deceased U.S. President without the written consent of the surviving spouse

7. Priority of rights and likelihood of confusion - Lanham Act Section

8. The mark is merely descriptive

9. The mark is deceptively misdescriptive

10. The mark is geographically descriptive

11. The mark is primarily geographically deceptively misdescriptive

12. The mark is primarily merely a surname

13. The mark comprises matter that, as a whole, is functional

14. 14 The mark is likely to cause trademark dilution

15. The Applicant has committed fraud on the USPTO

Exhibit“B”

Likelihood of Confusion Factors

1. The similarity or dissimilarity of the marks in their entireties as to appearance1sound.connotation,and commercial impression.

2. The similarity or dissimilarity and nature of the goods . .. described in an application or registration or in connection with which a prior mark is in use.

3. The similarity or dissimilarity of established, likely-to-continue trade channels3

4. The conditions under which and buyers to whom sales are made, i.e., "impulse'' vs. careful, sophisticated purchasing.

5. The fame of the prior mark

6. The number and nature of similar marks in use on similar goods6

7. The nature and extent of any actual confusion

8. The length of time during and the conditions under which there has been concurrent use without evidence of actual confusion

9. The variety of goods on which a mark is or is not used.

10. The market interface between the applicant and the owner of a prior mark

11. The extent to which applicant has a right to exclude others from use of its mark

12. on its goods.

13. The extent of potential confusion.

14. Any other established fact probative of the effect of use.