INTRODUCTION

This three-part article, TO OPPOSE OR NOT TO OPPOSE 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 do damage to the rights of the trademark owner. 

In Part Ⅰ we covered the U.S. Opposition & Procedure to oppose.   ln this, Part Ⅱ of the three part article we will present the practical considerations and suggest steps to be taken in a)evaluating whether or not to oppose and, b) increasing the chances of successfully opposing after the decision is made to oppose. 

In Part Ⅲ we will discuss alternative cost-effective strategies to prevent the registration of trademarks that can potentially harm the owner of a trademark exclusive right to use its mark in commerce in the United States.

PART II: TO OPPOSE OR NOT TO OPPOSE

PRACTICAL CONSIDERATIONS TO ASSIST IN DECIDING WHETHER TO OPPOSE A U.S.

TRADEMARK APPLICATION

A) Overview: 

Since the opposition proceedings can entail substantial costs and effort, the decision of whether to oppose a trademark application should not be made hastily before giving due consideration to important factors, in addition to the similarity or dissimilarity of the parties' trademarks and overlap of relationship of goods and services.   Therefore, in addition to assessing the legal merits of opposing, it is also important to: a) take into account of the pros and cons of opposing a particular trademark application; and b) assess any potential risks or unintended consequences that could arise after the opposition is filed.

B) Practical Considerations in Making the Decision: 

1) The Importance of the Owner's Trademark 

Consider whether the mark that would be the basis of opposition is of such importance to the prospective opposer's business, that an opposition is warranted,   lf. for example the mark is just one in a portfolio that is not of great commercial significance, it may not be worthwhile to oppose the application, Conversely, if the mark is important to the business and possesses significant goodwill, these factors favor bringing an opposition proceeding. 

2) Whether Registration of the Applicant's Mark is Likely to Cause Damage 

A potential opposer should consider whether it will actually be damaged by the registration of the applicant's mark, keeping in mind that the applicant will still be able to use its mark, unless the potential opposer files a lawsuit for infringement and obtain9a court ordered injunction requiring the applicant to cease using the opposed trademark.

One key factor is whether the applicant's goods or services overlap with, or are sufficiently related to the trademark owner's goods or services, such that a likelihood of confusion as to the source of the goods and services would occur.   Often, trademark owners file oppositions where the applicant's mark is similar to that of the trademark owner's, but the parties' goods and services are distinct and not considered to be legally related.   In such cases, the burden of proof necessary to prevail is greatly increased. Thus, a potential opposer should understand that merely because the applicant's mark is similar to its mark, it may not succeed in an opposition proceeding if the goods or services are not closely related.   For example, would the registered service mark DELTA AlRLINES for “Air transportation Services” be damaged by allowing a registration for DELTA  for “ Plumbing Fixtures”? 

Additionally, the potential opposer should consider whether the respective marks have co-existed peacefully in the marketplace confusion.   In the United States, trademark rights accrue through use, and it is possible two marks may have co-existed before a trademark application is eligible to be opposed, especially given the current delays in examination by the USPTO.   lf the marks have co-existed peacefully in the marketplace for an appreciable amount of time without instances of source confusion the potential opposer should consider whether there is significant harm to justify opposing, Ample consideration should be given to this point since a well-versed applicant will undoubtedly present arguments to this effect in defense of its application. 

3) Time and Costs 

A typical opposition proceeding can take two or more years from commencement to a final decision. Some strongly contested and complex opposition proceedings can last significantly longer.   Therefore, it is important to have a clear understanding of the time and expenses involved in an opposition proceeding before deciding to oppose or not to

oppose an application.   Since the opposition is a quasi-litigation with many of the same rules of procedure and evidence as (required by) the United States Federal Courts, the time and cost can, in certain cases, mirror those of a United States trademark infringement action in federal court. 

4) Strategic Considerations 

A.     Despite the high cost and effort associated with prosecuting an opposition through a trial and a final decision on the merits, a potential opposer should not be necessarily deterred from opposing.  This is because: a)most are cases settled during the course of the proceedings; and, b) many applicants fail to respond to Notices of Opposition, resulting in the Trademark Trial & Appeal Board entering a default judgement in favor of the opposer and a rejection of the application. 

B.     An opposer can always elect to withdraw an opposition once filed. lf the withdrawal occurs before the applicant has filed an Answer, the opposition is deemed to be withdrawn without prejudice to the opposing party, which means that it is not precluded from later seeking to cancel the registration that results of the application.  lf the opposer decides to withdraw its opposition after the applicant has filed it Answer to the Notice of Opposition, the opposition is dismissed with prejudice which means that the opposer is precluded from later attacking the registration that matures from the opposed application or from opposing an application filed by the same applicant for the same mark covering the same goods and/or services. 

Therefore ,if the trademark owner has a bong fide position on the merits. and believes it will be damaged, filing an opposition could resolve the conflict in a short period of time by negotiating an amicable settlement with the applicant that addresses the conflict. or if the applicant does not defend its application by not filing its response to the Notice of Opposition. 

C.     Another strategic advantage in filing an opposition is to demonstrate that the trademark owner is diligent in taking action to protect its mark and can serve as a disincentive to third parties from adopting marks and seeking registration that are confusingly similar to the opposer's trademark. 

D.     Opposing can be helpful in the event of future litigation that involves the opposed mark.

5) The Potential Opposer's Due Diligence Before Filing an Opposition

Before reaching the ultimate decision of whether or not to oppose and to insure that filing an opposition will not result in unintended negative consequences, the potential opposer should: 

A.     lnvestigate the applicant, whether the trademark is in use, and the nature of the market for the goods and services of the applicant; 

B.     Ensure that the trademark registration or the application which is the legal basis for the opposition is not vulnerable to counter-attack by the applicant on grounds of:

    i.          Priority: In the United States, trademark rights accrue through actual use. lf the applicant's actual use of the mark in the U.S pre-dates the potential opposer's use(or constructive use) date, the opposer's application or registration can be vulnerable to attack, regardless of the date of the application sought to be opposed.

   ii.          Abandonment- Has the opposer used the mark (in the United States) on algoods and services claimed in the opposer's registration? lf not the opposer's registration could be vulnerable to counter-claims resulting in abandonment of its registration for goods and services. 

iii.          Lack of a bona fide intention to use the mark for all of the goods and services in the opposer's registration or application- Similar to (ⅱ) above, if the opposer's application is/was not based on use in the United States, the opposer must ensure that it has a bona-fide intention to use the mark for a goods and services claimed in its application or resulting registration or the application/registration could be vulnerable to attack on the ground of abandonment for some or all of the goods and/or services in its registration. 

iv.          Last, the opposer must ensure that its own registration or application is not vulnerable to attack on the grounds that it was obtained by fraudulent means.  Applicants will use any and all arguments to defend their applications, including that there may have been fraud in obtaining the opposer's registration.   Therefore, the prosecution history of the opposer's registration must be reviewed, including any declarations or statements made of record during the prosecution to ensure accuracy and completeness and to ensure that the opposer's registration will not be vulnerable to attack on these grounds. 

C.     Examine the file wrapper of the application to be opposed to learn whether the applicant made any admissions during the prosecution that would be helpful in an opposition and whether there have been any “naked assignments” of the applicant's trademark; 

D.     Perform an Internet investigation or market investigation of the applicant through trademark investigator to learn how the applicant's trademark is being used; 

E.     Determine whether the applicant is an established U.S. company, a U.S. citizen or a foreign company or citizen. Often, U.S. companies and/or citizens may have different agendas and risk tolerance levels than their foreign counterparts This factor can be important in determining whether an applicant is inclined to defend its application or to default; 

F.     Determine who the applicant has chosen as the attorney to represent them. 

       i.          Does the attorney have expertise in trademark law? 

      ii.          What is the reputation of the attorney with regards to aggressiveness, etc.? 

G.     Was the trademark application filed pro-se? 

H.     H. Conduct a dilution search of the federal trademark register to determine whether the potential opposer or applicant's trademark is diluted; 

I.       Investigate whether third parties have requested extensions of time to oppose or filed oppositions to the application that the prospective opposer is considering opposing; 

J.      Investigate whether any opposition or cancellation proceeding have been filed against the applicant's other registrations and applications and whether or not the applicant has defended its applications/registrations; 

K.     Research whether there are prior TTAB decisions involving the same mark or decisions that opine whether the goods/services of the potential opposer and applicant or similar goods and services? ; 

L.      Investigate whether the potential opposer and applicant's marks coexist in other countries; and assess the feasibility of an amicable resolution between you and the applicant.

6) Conclusion

The attorneys at Peroff Saunders believe that a prudent and informed decision as to whether or not to oppose a U.S. trademark application can only be made after considering the foregoing criteria in consultation with experienced U.S. Trademark Counsel. 

Working hand-in-hand with experienced U.S. trademark counsel who are well versed in the law and take into consideration the legal and strategic considerations outlined above can help ensure that trademark owners are best equipped to make a fully informed and reasoned decision about whether or not to oppose.