STEPS FOR A TRADEMARK OPPOSITION

(to a USPTO Trademark Application)

Trademarks that have been approved for publication (“Publication & Issue Review Complete” for marks already in use) or have received “Notice of Allowance” (intent to use applications) are published for opposition and may be opposed by anyone who has standing for an opposition and grounds for an opposition.

Similarly, trademarks that have been registered may be challenged for cancellation by anyone who has standing for a cancellation and grounds for a cancellation. Any ground that negates the defendant's right to registration may be raised for either opposition or cancellation. (See Examples of Grounds for Opposition and Cancellation of a Trademark below.)

Standing is why a person (or entity) believes it is or will be damaged by the registration sought to be opposed or canceled.  At the initial pleading stage, all that is required is that a plaintiff allege facts sufficient to show a “real interest” in the proceeding, and a “reasonable basis for its belief of damage." To plead a "real interest," plaintiff must allege a "direct and personal stake" in the outcome of the proceeding. The allegations in support of plaintiff's belief of damage must have a reasonable basis "in fact." (See Trademark Trial and Appeal Board Manual of Procedure (TBMP) 309.03(b) Standing for case definitions of “real interest,” “direct and personal stake,” “reasonable basis,” and “in fact.”)

Potential registrars of merely descriptive terms may be opposed and damages assumed when the mark sought to be registered is descriptive of goods and opposer has a sufficient real interest in using the same descriptive words in its business. DeWalt, Inc. v. Magna Power Tool Corp., 289 F.2d 656, 129 USPQ 275, 280 (CCPA 1961).

WHAT ARE THE STEPS IN AN OPPOSITION OR CANCELLATION?

Extracted from TBMP 701 (June 2012): On receipt of a properly filed notice of opposition or petition to cancel (or at the time described in 37 CFR § 2.92 for an interference, see TBMP § 1003, or 37 CFR § 2.99(c) for a concurrent use proceeding which is not based on a court decision or a prior Board decision, see TBMP § 1106.04), the Board sends out a notice advising the parties of the institution of the proceeding. The notice includes a trial order setting deadlines for the answer, discovery conference, initial and expert disclosures, discovery, and each party’s required pretrial disclosures, and assigning each party's time for taking testimony and introducing other evidence in the case. [Note 1.] See TBMP § 310.01 (oppositions and cancellations); TBMP § 1007 (interferences) and TBMP § 1106.04 (concurrent use proceedings). See also TBMP § 403.01. In the trial order, the Board schedules a 30-day testimony period for the plaintiff to present its case in chief, a 30-day testimony period for the defendant to present its case and to meet the case of the plaintiff, and a 15-day testimony period for the plaintiff to present rebuttal evidence. [Note 2.] The plaintiff's period for presenting its case in chief is scheduled to open 60 days after the close of the discovery period; the defendant's testimony period is scheduled to open 30 days after the close of the plaintiff's testimony period in chief; and the plaintiff's rebuttal testimony period is scheduled to open 30 days after the close of the defendant's testimony period. [Note 3.] For cases commenced on or after November 1, 2007, the trial order also schedules the time for pretrial disclosures of witnesses: each party must make pretrial disclosures no later than fifteen days prior to the opening of its testimony period. [Note 4.] . . . NOTES:1. See 37 CFR § 2.120(a) and 37 CFR § 2.121. 2. See 37 CFR § 2.121(b)(1) and 37 CFR § 2.121(c). 3. See Stagecoach Properties, Inc. v. Wells Fargo & Co., 199 USPQ 341, 356 (TTAB 1978) (thirty-day interval between each testimony period), aff'd, 685 F.2d 302, 216 USPQ 480 (9th Cir. 1982).4. See 37 CFR § 2.121(e).

1.     Notice of Opposition or Petition to Cancel is filed by Plaintiff  (see suggested format for cancellation)
2.     Defendant (applicant or registrant) Answers within 40 days
3.      Discovery Conference between parties (the parties are required to conference in person, by telephone, or by any other means on which they may agree)
4.     Discovery Opens
5.     Initial Disclosures Due
6.     Expert Disclosures Due
7.      Discovery Closes
8.      Plaintiff's Pretrial Disclosures
9.      Plaintiff's 30-day Trial Period-Brief on the Merits submitted
10.      Defendant's Pretrial Disclosures
11.     Defendant's 30-day Trial Period-Rebuttal on Brief on the Merits submitted
12.      Plaintiff's Rebuttal Disclosures
13.     Plaintiff's 15-day Rebuttal Period
14.      Board's Decision

Many opposition & cancellation submissions are handled entirely through Electronic System for Trademark Trials and Appeals (ESTTA). Note: Remember to file your proof of service!

EXAMPLES OF GROUNDS FOR OPPOSITION AND CANCELLATION OF A TRADEMARK

(from Trademark Trial and Appeal Board Manual of Procedure (TBMP) 309.03(c) Grounds)

(1) Section 2(d) of the Act, 15 U.S.C. §1052(d): That defendant's mark so resembles a mark registered in the 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 or services of the defendant, to cause confusion, or to cause mistake, or to deceive.

See, e.g., Opryland USA Inc. v. The Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1473 (Fed. Cir. 1992) and Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002).

(2) The grounds specified in Section 2(e) of the Act, 15 U.S.C. §1052(e); for example, that defendant's mark, when used on or in connection with the goods or services of the defendant, is merely descriptive or deceptively misdescriptive of them,

See Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1). See also, e.g., The Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357, 57 USPQ2d 1720 (Fed. Cir. 2001) (deceptive misdescriptiveness) and Callaway Vineyard & Winery v. Endsley Capital Group, Inc., 63 USPQ2d 1919 (TTAB 2002) (mere descriptiveness).

or that defendant's mark is primarily geographically descriptive

See Section 2(e)(2) of the Trademark Act, 15 U.S.C. § 1052(e)(2). See also, e.g., University Book Store v. University of Wisconsin Board of Regents, 33 USPQ 1385 (TTAB 1994).

or primarily geographically deceptively misdescriptive of them;

See Section 2(e)(3) of the Trademark Act, 15 U.S.C. § 1052(e)(3). See also In re California Innovations, Inc., 329 F.3d 1334, 66 USPQ2d 1853 (Fed. Cir. 2003); In re Save Venice New York, Inc., 259 F.3d 1346, 59 USPQ2d 1778 (Fed. Cir. 2001); and In re Wada, 48 USPQ2d 1689 (TTAB 1998), aff'd, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999).

and that defendant's mark is primarily merely a surname.

See Section 2(e)(4) of the Trademark Act, 15 U.S.C. § 1052(e)(4). See also e.g., Michael S. Sachs Inc. v. Cordon Art B.V., 56 USPQ2d 1132 (TTAB 2000); Kellogg Co. v. Pack'Em Enterprises Inc., 14 USPQ2d 1545 (TTAB 1990), aff’d, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991); Allied Mills, Inc. v. Kal Kan Foods, Inc., 203 USPQ 390, 391-92 (TTAB 1979); and Food Specialty Co. v. Carnation Co., 170 USPQ 522, 523 (TTAB 1971).

(3) The grounds specified in Section 2(a) of the Act, 15 U.S.C. §1052(a); for example, that defendant's mark is geographically deceptive,

See, e.g., Consorzio del Prosciutto di Parma v. Parma Sausage Products, Inc., 23 USPQ2d 1894 (TTAB 1992) (mark's geographic deceptiveness must be established as of the time the registration issues). Cf. K-Swiss Inc. v. Swiss Army Brands Inc., 58 USPQ2d 1540, 1543 (TTAB 2001) (can be cancelled if a registrant, through its own actions, causes its mark to become geographically deceptive subsequent to the issuance of the registration).

that defendant's mark disparages members of a particular group,

See, e.g., Boswell v. Mavety Media Group Ltd., 52 USPQ2d 1600 (TTAB 1999) (women in general and African American women in particular); Order Sons of Italy in America v. Memphis Mafia Inc., 52 USPQ2d 1364 (TTAB 1999) (members of plaintiff's Order and Italian-Americans in general); and Harjo v. Pro-Football Inc., 284 F. Supp. 2d 96, 68 USPQ2d 1225 (D.D.C. 2003) (Native Americans).

that defendant's mark consists of or comprises scandalous matter,

See, e.g., In re Boulevard Entertainment, Inc., 334 F.3d 1336, 67 USPQ2d 1475 (Fed. Cir. 2003) and In re Mavety Media Group, Ltd., 33 F.3d 1367, 31 USPQ2d 1923 (Fed. Cir. 1994).

or that defendant's mark falsely suggests a connection with plaintiff's name or identity

See, e.g., Internet Inc. v. Corporation for National Research Initiatives, 38 USPQ2d 1435 (TTAB 1996) and Buffett v. Chi Chi's, Inc., 226 USPQ 428 (TTAB 1985).

(4) That defendant's product design is de jure functional, and if not de jure functional, that the product design has not acquired distinctiveness.

See Section 2(e)(5) of the Trademark Act, 15 U.S.C. § 1052(e)(5), and, e.g., M-5 Steel Mfg, Inc. v. O'Hagin's Inc., 61 USPQ2d 1086 (TTAB 2001). See also, e.g., Valu Engineering Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422 (Fed. Cir. 2002).

(5) That there was no bona fide use of defendant's mark in commerce prior to the filing of the use-based application for its registration under Section 1(a) of the Act, 15 U.S.C. §1051(a).142

See, e.g., International Mobile Machines Corp. v. International Telephone and Telegraph Corp.,800 F.2d 1118, 231 USPQ 142 (Fed. Cir. 1986); Paramount Pictures Corp. v. White, 31 USPQ 1768 (TTAB 1994) ("use in commerce" involves the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark) aff'd (unpub'd) 108 F.3d 1392 (Fed. Cir. 1997); Pennwalt Corp. v. Sentry Chemical Co., 219 USPQ 542, 558 (TTAB 1983); and Bonaventure Associates v. Westin Hotel Co., 218 USPQ 537, 543 (TTAB 1983).

(6) That defendant did not have a bona fide intent to use the mark in connection with the identified goods/services as of the filing date of the application.

See, e.g., Lane Ltd. V. Jackson International Trading Co., 33 USPQ2d 1351, 1352 (TTAB 1994) and Commodore Electonics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1504 (TTAB 1993).

(7) That defendant’s mark is a mere background design that does not function as a mark separate and apart from the words displayed thereon.

See, e.g., General Foods Corp. v. Ito Yokado Co., Ltd., 219 USPQ 822, 825 (TTAB 1983).

(8) That defendant is not (and was not, at the time of the filing of its application for or that registration) the rightful owner of the registered mark.

See, e.g., Anheuser-Busch Inc. v. The Florists Association of Greater Cleveland Inc., 29 USPQ2d 1146 (TTAB 1993); Treadwell's Drifters Inc. v. Marshak, 18 USPQ2d 1318, 1320 (TTAB 1990); and Kemin Industries, Inc. v. Watkins Products, Inc., 192 USPQ 327, 328 (TTAB 1976). Cf., e.g., Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993) (where opposer was asserting that applicant's mark is a descriptive term which cannot be owned exclusively by anyone, rather than alleging that someone other than applicant is the owner of the term as a mark), recon. den., 36 USPQ2d 1328 (TTAB 1994).

(9) That defendant's mark, consisting of a particular color combination applied to its goods, is ornamental and has not become distinctive as an indication of the source of defendant's goods.

See, e.g., Goodyear Tire & Rubber Co. v. Vogue Tyre & Rubber Co., 47 USPQ2d 1748 (TTAB 1998) and Kassnar Imports v. Plastilite Corp., 180 USPQ 156, 157 (TTAB 1973), aff'd, 508 F.2d 824, 184 USPQ 348, 350 (CCPA 1975).

(10) That the term for which registration is sought or for which registration has been obtained has not been used as a trademark or service mark.

See, e.g., Anheuser-Busch Inc. v. The Florists Association of Greater Cleveland, Inc., supra (allegation that slogan was used as mere advertising and not as a trademark) and Marshall Field & Co. v. Mrs. Fields Cookies, 11 USPQ2d 1355 (TTAB 1989).

(11) That defendant's mark represents multiple marks in a single application (or registration) ("phantom mark").

See, e.g., Cineplex Odeon Corp. v. Fred Wehrenberg Circuit of Theatres, 56 USPQ2d 1538 (TTAB 2000). See also In re International Flavors & Fragrances Inc., 47 USPQ2d 1314 (TTAB 1998) aff'd 183 F.3d 1361, 51 USPQ2d 1513 (Fed. Cir. 1999).

(12) That defendant's mark has been abandoned due to nonuse;

See, e.g., Linville v. Rivard, 41 USPQ2d 1731 (TTAB 1996), aff’d,133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir. 1998); Imperial Tobacco Ltd. V. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390 (Fed. Cir. 1990); and Auburn Farms, Inc. v. McKee Foods Corp., 51 USPQ2d 1439 (TTAB 1998).

or due to a course of conduct that has caused the mark to lose significance as an indication of source.

See, e.g., Woodstock's Enterprises Inc. v. Woodstock's Enterprises Inc., 43 USPQ2d 1440 (TTAB 1997), aff'd (unpub'd), Appeal No. 97-1580 (Fed. Cir. Mar. 5, 1998).

(13) That defendant's mark consists of or comprises the name of a particular living individual without the individual's consent.

See Section 2(c) of the Trademark Act, 15 U.S.C. § 1052(c). See also Ross v. Analytical Technology, Inc., 51 USPQ2d 1269 (TTAB 1999) (plaintiff must establish that the "name," as used on the goods or services, points uniquely to plaintiff as a "particular living individual") and Ceccato v. Manifattura Lane Gaetano Marzotto & Figli S.p.A., 32 USPQ2d 1192 (TTAB 1994) (party asserting Section 2(c) ground must have cognizable or proprietary right in the name).

(14) That defendant's product design is generic.

See Sunrise Jewelry Manufacturing Corp. v. Fred, S.A., 175 F.3d 1322, 50 USPQ2d 1532 (Fed. Cir. 1999) (the term "generic name" as used in 15 U.S.C. § 1064(3) includes trade dress such as product design or configuration).

(15) That defendant's mark would dilute the distinctive quality of plaintiff's famous mark.

See Sections 13(a) and 14 of the Trademark Act, as amended, 15 U.S.C. §§ 1063(a) and 1064, as amended, and Toro Co. v. ToroHead Inc., 61 USPQ2d 1164 (TTAB 2001). See also Moseley v. Secret Catalogue Inc., 537 US 418, 65 USPQ2d 1801 (2003) and, for example, Enterprise Rent-A-Car Co. v. Advantage Rent-A-Car, Inc., 62 USPQ2d 1857 (TTAB 2002), aff'd, 300 F.3d 1333, 66 USPQ2d 1811 (Fed. Cir. 2003).

HAS A TRADEMARK BEEN APPLIED FOR OR PUBLISHED FOR OPPOSITION THAT IS VERY SIMILAR TO YOURS?

Call us SOON at 1-651-500-7590  . We can take the steps to oppose that mark on your behalf (or cancel the mark is the time for opposition has passed). Timing is important! The best time to oppose a mark is during the period when it has been published for opposition. Once the mark issues, the mark can only be canceled.

PLAN FOR A SUCCESSFUL, STRONG TRADEMARK THAT WILL NOT BE SUCCESSFULLY OPPOSED OR CANCELED

To verify a potential trademark is strong, is available to use, and is ready to register, the process should be more than a direct hit federal search. To maximize the commercial strength and minimize the weaknesses of a trademark, we start with these five steps:

1) Verify Inherent Strength (this avoids merely descriptive, geographically descriptive, likelihood of confusion and other office actions),

2) Verify Right to Use, (this avoids likelihood of confusion refusal office actions and others)

3) Verify Right to Register, (this avoids many types of refusals including merely descriptive, deceptively misdescriptive, geographically descriptive and others that can often be predicted)

4) Verify the potential mark (as currently used) Functions As A Mark, and (this avoids specimen refusals, trade name refusals, and others. The USPTO is looking for valid use not just any use of a mark.)

5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing. (This avoids office actions to correct incorrect IDs  which can slow down a registration. Incorrect IDs  may be corrected during the prosecution of a trademark if they do not materially alter the mark or the ID. Correcting problems before application saves time and money. Filing in a new class after an application has been submitted to cure a problem ID is the same price as a new application in that class.)

*We don’t stop with these five steps but they are a good start!

Call us at 1-651-500-7590   for a Strong Trademark. A Strong Trademark is Not Just a tool to increase sales to customers–it is also easier to sell to your investors & licensees. If you have already received a refusal, we can provide a quick and economical Response to Office Action (ROA).

Call 1-651-500-7590 or email info@notjustpatents.com for  Trademark Help; Responses to Office Action; File or Defend an Opposition or Cancellation; Patent or Trademark Searches and Application; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites.       

Patents

Trademarks

Steps to a Patent    How to Patent An Invention

Patent Search Steps

Strong Trademark  Trademark Inherent Strength   Enforcing Trade Names

Common Law Trademarks     Trademark Goodwill Trademark Protect

Should I Get A Trademark or Patent?

Patentability Evaluation

Trademark Disclaimers   Trademark Dilution     Oppose or Cancel?

Examples of Disclaimers  Business Name Cease and Desist

35 U.S.C. 101 Inventions patentable.

Verify a Trademark  Be First To File   How to Trademark Search

35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.

Trademark Statistics    Business Name Cease and Desist Letters

How To Answer A Trademark Cease and Desist Letter

35 U.S.C. 282 Presumption of validity; defenses

Trademark Refusals    Does not Function as a Mark Refusals

37 CFR § 1.53 Application number, filing date, and completion of application

Acceptable Specimen       Supplemental Register  $199 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Filing Requirements for Patent Applications

Trademark Attorney for Overcoming Office Actions

Functional Trademarks   How to Trademark     Surname Refusal

List of U.S. Patent Classifications

Grounds for Opposition & Cancellation     Cease and Desist Letter

How Do U.S. Patent Classifications Work?

Valid/Invalid Use of Trademarks     Trademark Searching

Patent Statistics     Sample Patent, Trademark & Copyright Inventory Forms

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion  DuPont Factors

Proximate Function

Color as Trade Dress  3D Marks as Trade Dress

Invention Information-  What is the Invention?

Ornamental Refusal (a type of Specimen Refusal)

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Descriptive Trademarks Trademark2e.com  Likelihood of Confusion 2d

Patent search-New invention

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Patent Search-Non-Obvious

Register a Trademark-Step by Step

Difference between Provisional and Nonprovisional Patent Application

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

What Does ‘Use in Commerce’ Mean?    SCAM Letters

Shop Rights

Section 2(d) Refusals   ApplyToTrademark.com

Patent Pending see also Patent Marking

Typical Brand Name Refusals  What is a Family of Marks?

Patent Drawings

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

TSDR Trademark Status and Document Retrieval

What is a Small or Micro Entity?

Published for Opposition see also Opposition Steps/Cancellation Steps

Counterclaims and Affirmative Defenses

How to Respond to Office Actions

What is a Compact Patent Prosecution?

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Changes To Implement the First Inventor To File Provisions of the America Invents Act

What is the Difference between Principal & Supplemental Register? What If Someone Files An Opposition Against My Trademark?

Patent steps

How to Respond Office Actions  DIY Overcoming Descriptive Refusals

PCT Patent Application information

Trademark Clearance Search   DIY Trademark Strategies

Provisional Patent Effect on Patentability

Samples of Responses to Office Actions

ID of Goods and Services see also Headings (list) of International Trademark Classes

Broad Patents

Geographically Descriptive or Deceptive

Making Amendments in Response to Office Actions

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples Office Action Responses More Examples

Trademark Incontestability  TTAB Manual (TBMP)

Trade Secrets

What are Dead or Abandoned Trademarks? Can I Use An Abandoned Trademark?  Can I Abandon a Trademark During An Opposition?

State & Federal Trade Secret Laws

Differences between TEAS and TEAS plus  Zombie Trademark

Chart of Patent vs. Trade Secret

What Does Published for Opposition Mean?

How to Keep A Trade Secret

Acquired Distinctiveness  2(f) or 2(f) in part Extension of Time to Oppose