Originally appeared in Law360 on July 6, 2015.
—by Paul C. Llewellyn
An opposition proceeding affords third parties an opportunity to object to a trademark application that they believe may harm their business or cause consumer confusion. Publication of a trademark application initiates the opposition period. Once a mark is published, third parties who believe that they will be damaged by registration of the trademark have 30 days to institute a trademark opposition proceeding by filing a notice of opposition with the Trademark Trial and Appeal Board. Alternatively, potential opposers may file a request for an extension of time to oppose within that 30 day period. The ability to oppose is limited to applications for registration on the Principal Register. Applications for the Supplemental Register cannot be opposed and are considered registered as of the publication date. (Third parties who wish to object to a mark on the Supplemental Register may petition to cancel the mark after it registers.)
If you do not file a notice of opposition or an extension request by the 30-day deadline, it cannot be remedied. Accordingly, if your client is considering opposing a trademark application, it is advisable to file at least an extension request (for which there is no fee charged) by or before the 30-day deadline to provide additional time to consider the matter. If the 30-day deadline has passed, potential opposers have no other option but to wait until the application registers (if it does) and then file a petition to cancel the applicant’s mark.
Filing a notice of opposition initiates the opposition proceeding against the trademark applicant with the board. There are a number of grounds upon which you may file an opposition, including that the applied-for mark is likely to cause confusion with the opposer’s mark, the mark is merely descriptive, or, in the case of a design mark, the mark is functional. TBMP 309.03(c). Likelihood of confusion is probably the most widely used ground upon which to base an opposition. An application can be opposed even on grounds that the applicant overcame during examination.
It is important to note that the relief granted by the board is limited to a refusal to register the subject application. The board does not have authority to order the applicant to cease actual use of the mark. In order to obtain such injunctive relief, the opposer must seek relief in civil court, though sometimes you can negotiate a discontinuance of the subject mark, or limitations on its use, in connection with the settlement of an opposition proceeding. (It also is important to note that, as the U.S. Supreme Court held in B&B Hardware Inc. v. Hargis Industries Inc. (March 24, 2015), the TTAB’s determination of certain issues in an opposition proceeding, including the likelihood of confusion between two marks, is entitled to issue preclusion in a subsequent trademark infringement action in federal court under some circumstances.)
Nonetheless, there are several potential benefits to an opposition over a civil litigation. In particular, when determining an opposition asserting likelihood of confusion, the board generally assesses the mark as applied for, rather than in the commercial context in which it is actually used. This narrow assessment sometimes is more favorable to the opposer than the approach a court takes in a trademark infringement action, where the similarity of the parties’ marks often is assessed in the context of actual packaging and advertising used in the marketplace.
In addition, an opposition proceeding is generally less expensive than a full-blown litigation, and a notice of opposition is typically less complicated to draft and file than a complaint, and, if necessary, can be easier and cheaper to withdraw. On the other hand, a potential opposer should also consider that an opposition proceeding can itself be long and protracted, especially if it is pursued to a final judgment. In some instances, opposition proceedings (just like civil litigation) may also open the opposer up to a cancellation counterclaim by the applicant. As noted above, some determinations in an opposition proceeding may also have preclusive effect in later civil proceedings, another consideration to take into account when deciding whether to file an opposition.
Moreover, in determining whether to bring an opposition, you also should weigh the likelihood of success, the client’s desired outcome and possible settlement alternatives. For example, in some instances, abandonment of the subject application may not be necessary, but, rather, a modest amendment to the identification of goods or services may diminish the potential for likelihood of confusion. Similarly, depending on the specific circumstances, the respective parties may be able to work out a coexistence arrangement. This frequently occurs when the subject application is cited against a later-filed application by an opposer (but where the opposer actually has priority) and the parties are not competitive.
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