- Opposition Proceedings – Litigation Before the Trademark Office
When a trademark application is filed with the United States Patent and Trademark Office (PTO) it is examined. If at the conclusion of this examination, the trademark is deemed allowable, it is published for opposition in the Official Gazette of the PTO. Upon publication, a thirty (30) day opposition period begins. During this time and according to the Lanham Act §13, 15 U.S.C.A. § 1063, "any person who believes that he would be damaged by the registration of a mark upon the principal register may, upon payment of the prescribed fee, file a notice of opposition with the PTO." This notice, or a request for an extension of time to file the notice, must be filed with the PTO within thirty days of publication of the trademark. If an extension of time is filed, the time for filing for opposition is extended for an additional 30 days. Further extensions of time may be granted by the Commissioner of the PTO for good cause. The Applicant is notified of each extension applied for.
An opposition is essentially a litigation proceeding before the Trademark Trial and Appeals Board (TTAB) of the PTO. These proceedings can be quite costly so proper consideration should be given prior to undertaking a trademark opposition. Several factors should be weighed in deciding whether or not to initiate an opposition. Some of these are, which party has senior rights, e.g. began using the trademark first; is the senior user actually using the mark; the degree of similarity between the Applicant's and the Opposer's trademarks; and the Applicant's good faith in adopting its trademark.
Consideration should also be given as to whether a lawsuit should be filed in federal court instead of, or in addition to filing an opposition. It should be noted that an opposition, if decided favorably to the Opposer, only prevents registration of the trademark, it does not prevent use of the mark.
In an opposition, an Opposer can raise any legal defect or deficiency in a trademark application. In general, this means that a person has the right to object to the registration of a trademark based on likelihood of confusion, that the mark is generic or descriptive, the mark dilutes the distinctiveness of the Opposer's trademark that is famous, or that the applied for trademark is deceptive.
Most commonly, trademark oppositions are filed based on a likelihood of confusion. Confusing similarity under section 2 of the Lanham Act is found when the Applicant's trademark consists of or comprises of a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the Applicant, to cause confusion, or to cause mistake, or to deceive." (see 15 U.S.C.A. §1052(d)).
In an opposition proceeding involving allegations of likelihood of confusion an Opposer will allege that he/she has used the mark in identical or a closely related form in connection with identical or closely related goods and/or services. Since trademark rights arise in the United States based on use, an Opposer need not have a registered trademark. However, the Opposer will need to allege priority of use.
Evidentiary factors considered by the TTAB in determining whether or not a likelihood of confusion exists are:
1. The similarities of the marks in appearance, sound, connotation and commercial impression;
2. The similarity and nature of the goods and/or services as described in the trademark application;
3. The sophistication of the purchasers;
4. The fame of the mark;
5. The number of similar marks; and
6. Any actual confusion.
A published trademark may also be opposed if it is considered to be generic and thereby available for all to use. An opposition can also be filed if the mark is merely descriptive. According to the TTAB Manual of Procedure "if the term is considered descriptive and is therefore unregistrable, the registration of the published mark would enable the industry or trade for which the Opposer is a member from using the term sought to be registered freely. The owner of the opposed mark would in essence obtain an unfair advantage over his competitors by restricting their use of this common term that has always been used by the particular industry."
Under the Dilution Act, famous marks are protected against the dilution of the distinctive nature of the mark. It is possible to use a dilution cause of action against users of the same mark even when the defendant's goods and services bear no relation to the goods and services of the famous mark. Dilution causes either blurring, by which the connection in consumers' minds between the plaintiff's mark and the plaintiff's goods or services is weakened; or tarnishment, which means that the defendant's use is unsavory or unwholesome, or the mark is used with inferior products. Similar to evaluating "likelihood of confusion," the determination of whether or not a mark is famous involves weighing several factors as follows:
1. The duration and extent of use of the mark;
2. The duration and extent of advertising for the mark;
3. The geographic area in which the mark has been used;
4. The degree of distinctiveness of the mark;
5. The degree of recognition of the mark;
6. The method by which the product was distributed and marketed;
7. The use of the mark by third parties; and
8. Whether the mark was federally registered.
Deceptive trademarks are marks that cannot be registered because the mark mischaracterizes or misleads consumers as to the underlying product. Trademark oppositions can also be filed on such grounds as functionality, the mark is primarily a surname, the Applicant is not the owner of the mark for which registration is sought, and there is no use or intent to use the published mark in commerce.
Once a Notice of Opposition has been filed, the Applicant will file an answer admitting or denying the averments on which the Opposer relied in the notice. The answer states in short and plain terms the Applicant's defense to each claim asserted. If an Applicant is without knowledge or information sufficient to form a belief as to the truth of an averment, Applicant shall so state and this will have the effect of a denial. Compulsory counterclaims are filed with the answer. A compulsory counterclaim is an attack on the validity of the Opposer's registration which was used as the grounds for bringing the opposition action. If grounds for a counterclaim are learned during the course of the opposition proceeding, the counterclaim shall be pleaded promptly after the grounds therefore are learned.
An opposition is somewhat similar to a civil litigation. However, despite the similarities, oppositions differ in some significant ways from lawsuits. The major difference is the absence of a live trial. Instead, each party has a "testimony period" in which it may take depositions to get needed testimony into the record. The TTAB in reaching its conclusion reviews the transcripts of those depositions, along with any other evidence the parties have submitted. The attorneys can file trial briefs setting forth their arguments and may also request an oral hearing. However, proceedings before the TTAB are conducted in writing and the TTAB's action on a given case is based on the written record.
Trial procedures and the submission of evidence for opposition proceedings is governed by the Federal Rules of Civil Procedure. Upon completion of the pleadings stage, the TTAB issues a discovery and trial schedule. Upon discovery opening, each party has the opportunity to ascertain the facts underlying its adversaries case. Through the use of discovery depositions, interrogatories, requests for the production of documents and things, and requests for admissions, the litigants can discover the facts upon which the adversaries case is based. Discovery is
At the close of discovery, each party is given time for taking testimony. Following the parties testimony period, a rebuttal testimony period is provided. Briefs are then filed with the Opposer filing its brief first and the Applicant filing its brief within 30 days following the filing of the Opposer's brief. Reply briefs are generally filed in the same manner. Oral hearings are scheduled only upon request with matters typically being resolved on the written record. If no oral hearing is requested, the TTAB will issue its decision. A request for rehearing may be filed within one month of the decision. Appeal may be had to the Federal Courts or the US Court of Appeals for the Federal Circuit.
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