TTAB Statutory Cause of Action (previously known as Standing) for Oppositions and Cancellations

Likelihood of Confusion is one of the most common reasons for oppositions or cancellations with the TTAB (Trademark Trial and Appeal Board). Note that a petition to cancel claiming a likelihood of confusion for a complete cancellation is not available for a mark that has been registered on the Principal Register for more than 5 years and has become incontestable. However, under Trademark Act §18, 15 USC §1068, a petitioner may seek to partially cancel a registration over 5 years old by restricting the goods or services therein in order to avoid a likelihood of confusion.

Other grounds that are not available for a petition to cancel a mark that has been registered on the Principal Register for more than 5 years and has become an incontestable trademark are likelihood to cause mistake, or to deceive; being merely descriptive, deceptively misdescriptive, primarily geographically descriptive, primarily geographically deceptively misdescriptive; that defendant's mark is primarily merely a surname; 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 Trademark Act § 1(a), 15 U.S.C. § 1051(a); 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 under Trademark Act § 1(b), 15 U.S.C. § 1052(b);  that defendant’s mark is a mere background design that does not function as a mark separate and apart from the words displayed thereon; that defendant is not (and was not, at the time of the filing of its application for registration) the rightful owner of the registered mark; 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, or that defendant’s mark, consisting of a particular sound applied to its goods, is not inherently distinctive and has not acquired distinctiveness; 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, that defendant's mark represents multiple marks in a single application (or registration) (“phantom mark”). Note This list is exemplary, not exhaustive.

How common are oppositions or cancellations? About 30% of Extensions of Time to Oppose result in Oppositions.

How To Show Statutory Cause of Action (previously known as Standing)

For A Trademark Opposition or Cancellation

(extracted from TBMP 309.03(b) June 2022)

A real interest in the proceeding and a reasonable belief of damage may be found, for example, where plaintiff pleads (and later proves):

   Cause of Action Claim                                                       Case references

A claim of likelihood of confusion that is not wholly without merit [ Note 11.], including claims based upon current ownership of a valid and subsisting registration [ Note 12.] or prior use of a confusingly similar mark. [ Note 13.] A registration on the Supplemental Register may be sufficient to establish an entitlement to a statutory cause of action [ Note 14.];

 11.   See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 217 USPQ 641, 648 (Fed. Cir. 1983); Lipton Industries Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982); Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 44 (CCPA 1981) (plaintiff may show standing based on common law rights in mark that is distinctive, inherently or otherwise); Bausch & Lomb Incorporated v. Karl Storz GmbH & Co KG, 87 USPQ2d 1526, 1530 (TTAB 2008) (standing established by introduction of parties’ agreement); L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883, 1887 (TTAB 2008) (standing established by properly making pleaded registrations of record); Herbaceuticals Inc. v. Xel Herbaceuticals Inc., 86 USPQ2d 1572, 1576 (TTAB 2008) (standing based on ownership of prior registration not voided by allegation, even if true, that mark is generic); Grand Canyon West Ranch LLC v. Hualapai Tribe, 88 USPQ2d 1501, 1502 (TTAB 2008) (standing established by testimony as to prior use); Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1324 (TTAB 2007) (standing based on ownership of pleaded registrations); Chicago Bears Football Club Inc. v. 12TH Man/Tennessee LLC, 83 USPQ2d 1073, 1075 (TTAB 2007) (exclusive licensee has standing); Wet Seal Inc. v. FD Management Inc., 82 USPQ2d 1629, 1634 (TTAB 2007) (standing based on common law use of mark); Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1285 (TTAB 2007) (standing established by properly making pleaded registration of record and asserting non-frivolous likelihood of confusion claim); L. & J.G. Stickley Inc. v. Cosser, 81 USPQ2d 1956, 1964 (TTAB 2007) (cancellation petitioner’s standing based on prior common law use of elements contained in defendant’s registered marks); Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1848 (TTAB 2004); Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1657 (TTAB 2002); Metromedia Steakhouses, Inc. v. Pondco II Inc., 28 USPQ2d 1205, 1209 (TTAB 1993); The Nestle Co. Inc. v. Nash-Finch Co., 4 USPQ2d 1085, 1087 (TTAB 1987); Liberty Trouser Co. v. Liberty & Co., 222 USPQ 357, 358 (TTAB 1983) (allegation of likelihood of confusion accepted as proper allegation of petitioner’s standing with respect to pleaded grounds of fraud and abandonment).

 12.   See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982); King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974) (prior registration but not priority in use); Double Coin Holdings Ltd. v. Tru Development, 2019 USPQ2d 377409, at *4 (TTAB 2019) (pleaded registration made of record); Primrose Retirement Communities, LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1032 (TTAB 2016) (same); Research in Motion Limited v. Defining Presence Marketing Group Inc., 102 USPQ2d 1187, 1190 (TTAB 2012) (same); Vital Pharmaceuticals Inc. v. Kronholm, 99 USPQ2d 1708, 1712 (TTAB 2011) (standing established because pleaded registrations are of record on a motion for involuntary dismissal); Rocket Trademarks Pty. Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1072 (TTAB 2011) (pleaded registrations of record); SmithKline Beecham Corp. v. Omnisource DDS LLS, 97 USPQ2d 1300, 1301 (TTAB 2010) (same); Brown Shoe Co. v. Robbins, 90 USPQ2d 1752, 1754 (TTAB 2009) (same); Bass Pro Trademarks LLC v. Sportsman’s Warehouse Inc., 89 USPQ2d 1844, 1849 (TTAB 2008) (same); Corporacion Habanos S.A. v. Anncas Inc., 88 USPQ2d 1785, 1790 (TTAB 2008) (same); Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1586 (TTAB 2008) (standing established by making of record copies of its pleaded registrations showing the current status of the registrations and their ownership in opposer); H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1721 (TTAB 2008) (opposer alleged ownership of application that issued during proceeding and introduced a certified copy of subsequent registration at trial showing current status and title in opposer’s name); Apple Computer v. TVNET.net Inc., 90 USPQ2d 1393, 1396 (TTAB 2007) (pleaded registrations made of record); Sinclair Oil Corp. v. Kendrick, 85 USPQ2d 1032, 1037 n.10 (TTAB 2007) (opposer’s allegations of ownership of pleaded registrations insufficient to prove standing); Black & Decker Corp. v. Emerson Electric Co., 84 USPQ2d 1482, 1490 (TTAB 2007) (pleaded registrations made of record; cancelled registration has no probative value); Christian Broadcasting Network Inc. v. ABS-CBN International, 84 USPQ2d 1560, 1565 (TTAB 2007) (pleaded registrations made of record); Otto International Inc. v. Otto Kern GmbH, 83 USPQ2d 1861, 1863 (TTAB 2007) (pleaded registrations made of record); B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ2d 1500, 1505 (TTAB 2007) (pleaded registrations made of record); Truescents LLC v. Ride Skin Care LLC, 81 USPQ2d 1334, 1337 (TTAB 2006) (parties stipulated to status and title of opposer’s pleaded registrations and applications); Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1897 (TTAB 2006) (pleaded registration of record by virtue of the counterclaim brought by applicant); DC Comics v. Pan American Grain Manufacturing Co., 77 USPQ2d 1220, 1225 (TTAB 2005); Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313, 1315 (TTAB 2005) (status and title copies of pleaded registrations made of record).

 13.   See First Niagara Insurance Brokers Inc. v. First Niagara Financial Group Inc., 476 F.3d 867, 81 USPQ2d 1375, 1378 (Fed. Cir. 2007) (intrastate use by foreign opposer); AT&T Mobility LLC v. Mark Thomann, 2020 USPQ2d 53785, at *11 (TTAB 2020) (opposer’s standing confirmed by proof of its corporate relationship to entity using the mark as part of its trade name); Double Coin Holdings Ltd. v. Tru Development, 2019 USPQ2d 377409, at *4 (TTAB 2019) (standing also established by testimony with exhibits of earlier use of confusingly similar mark); Ayoub, Inc. v. ACS Ayoub Carpet Service, 118 USPQ2d 1392, 1395 (TTAB 2016) (opposer’s trade name use; admissions by applicant that opposer is direct competitor); Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1565 (TTAB 2011) (prior use established by testimony and conceded by applicant); Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1118 n.8 (TTAB 2009) (use of mark established by testimony sufficient to show reasonable belief of damage even though use "purportedly based on a license which has not been clearly established in evidence"); Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1022 (TTAB 2009) (standing established by showing of common law rights); Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Ltd., 86 USPQ2d 1283, 1285 (TTAB 2008) (prior use); General Motors Corp. v. Aristide & Co., Antiquaire de Marques, 87 USPQ2d 1179, 1181 (TTAB 2008) (past use and present licensing); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1106 (TTAB 2007) (prior use).

 14.   See Otter Products LLC v. BaseOneLabs LLC, 105 USPQ2d 1252, 1254 (TTAB 2012) (opposer’s Supplemental Registration sufficient to establish opposer’s real interest in proceeding).

Plaintiff has been refused registration of its mark because of defendant’s registration, or has been advised that it will be refused registration when defendant’s application matures into a registration, or has a reasonable belief that registration of its application will be refused because of defendant’s registration [ Note 15.];

 15.   See Empresa Cubana del Tabaco v. General Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014) (plaintiff’s application refused based on defendant’s registrations); Hole In 1 Drinks, Inc. v. Lajtay, 2020 USPQ2d 10020, at *3 (TTAB 2020) (evidence of record showing petitioner’s pending application refused registration based on respondent’s registration); Performance Products Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1039-40 (TTAB 2018) (opposer’s standing established through applicant’s concessions and admissions that opposer’s pending application would be refused registration should applicant’s application register); Saddlesprings Inc. v Mad Croc Brands Inc., 104 USPQ2d 1948, 1950 (TTAB 2012) (same); ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036, 1041 (TTAB 2012) (evidence of record showing petitioner’s pending application refused registration based on respondent’s registration); Kallamni v. Khan, 101 USPQ2d 1864, 1865 (TTAB 2012) (evidence of record showing petitioner’s pending application refused registration based on respondent’s registration); Mattel Inc. v. Brainy Baby Co., 101 USPQ2d 1140, 1142 (TTAB 2011) (Office action refusing registration to plaintiff based on defendant’s registration made of record); Weatherford/Lamb Inc. v. C&J Energy Services Inc., 96 USPQ2d 1834, 1837 (TTAB 2010) (Office action suspending plaintiff’s pending application pending possible refusal based on alleged likelihood of confusion with defendant’s registration made of record); Nextel Communications Inc. v. Motorola Inc., 91 USPQ2d 1393, 1400 (TTAB 2009); Hiraga v. Arena, 90 USPQ2d 1102, 1106-7 (TTAB 2009); IdeasOne Inc. v. Nationwide Better Health Inc., 89 USPQ2d 1952, 1953 (TTAB 2009); Corporacion Habanos S.A. v. Guantanamera Cigars, Co., 86 USPQ2d 1473, 1475 (TTAB 2008) (opposer’s application was suspended, and opposer, a Cuban entity, submitted a letter confirming permission from the U.S. Dept. of Treasury to file an opposition); Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1959 (TTAB 2008); Great Seats Ltd. v. Great Seats Inc., 84 USPQ2d 1235, 1237 (TTAB 2007); Tri-Star Marketing LLC v. Nino Franco Spumanti S.R.L., 84 USPQ2d 1912, 1914 (TTAB 2007); Cerveceria Modelo S.A. de C.V. v. R.B. Marco & Sons, Inc., 55 USPQ2d 1298, 1300 (TTAB 2000); Hartwell Co. v. Shane, 17 USPQ2d 1569, 1570 (TTAB 1990). Cf. Giersch v. Scripps Networks, 90 USPQ2d 1020, 1022 (TTAB 2009) (pending application must be properly introduced, and the fact that it was refused pending outcome of proceeding must be documented, before Board will rely upon application in determining plaintiff’s standing).

Plaintiff has a bona fide intent to use the same mark for related goods, and is about to file an intent-to-use application to register the mark, and believes registration of the mark will be refused in view of defendant’s registration [ Note 16.];

 16.   See American Vitamin Products Inc. v. Dow Brands Inc., 22 USPQ2d 1313, 1314 (TTAB 1992).

Defendant has relied on its ownership of its application or registration in another proceeding between the parties, or defendant has asserted a likelihood of confusion in another proceeding between the parties involving the same marks. [ Note 17.]

  17.   See Tonka Corp. v. Tonka Tools, Inc., 229 USPQ 857, 859 (TTAB 1986) (petitioner has standing to cancel registration that has been asserted, even defensively, in a civil action); and M. Aron Corp. v. Remington Products, Inc., 222 USPQ 93, 96 (TTAB 1984).

A counterclaimant’s entitlement to a statutory cause of action to cancel a pleaded registration is inherent in its position as defendant in the original proceeding. [ Note 18.] See also TBMP § 313.03.

   18.   See Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1428 (TTAB 2014) ("Applicant has standing based on opposers’ assertion of their marks and registrations against applicant in their notice of opposition."); Delaware Quarries, Inc. v. PlayCore IP Sub, Inc., 108 USPQ2d 1331, 1332 (TTAB 2013) (standing assessed at time the counterclaim is filed and Board’s dismissal of the main claim does not render counterclaim moot); Finanz St. Honore B.V. v. Johnson & Johnson, 85 USPQ2d 1478, 1479 (TTAB 2007); Carefirst of Maryland, Inc. v. FirstHealth of the Carolinas Inc., 77 USPQ2d 1492, 1502 (TTAB 2005); Ohio State University v. Ohio University, 51 USPQ2d 1289, 1293 (TTAB 1999); Ceccato v. Manifattura Lane Gaetano Marzotto & Figli S.p.A., 32 USPQ2d 1192, 1195 n.7 (TTAB 1994); Syntex (U.S.A.) Inc. v. E.R. Squibb & Sons Inc., 14 USPQ2d 1879, 1881 (TTAB 1990); Bankamerica Corp. v. Invest America, 5 USPQ2d 1076, 1078 (TTAB 1987); General Mills, Inc. v. Nature’s Way Products, 202 USPQ 840, 841 (TTAB 1979) (counterclaimant’s position as defendant in the opposition gives him a personal stake in the controversy). Cf. Great Seats Ltd. v. Great Seats Inc., 84 USPQ2d 1235, 1236 n.3 (TTAB 2007) (respondent in a cancellation proceeding has standing by virtue of its ownership of involved registration).

A plaintiff need not assert proprietary rights in a term in order to have an entitlement to a statutory cause of action. [ Note 19.] For example, when descriptiveness or genericness of the mark is in issue, plaintiff may plead (and later prove) its entitlement to a statutory cause of action by alleging that it is engaged in the sale of the same or related products or services (or that the product or service in question is within the normal expansion of plaintiff’s business) and that the plaintiff has an interest in using the term descriptively in its business. (That is, plaintiff may plead that it is a competitor.) [ Note 20.] Allegations that plaintiff is a competitor may be made in connection with other claims as well. [ Note 21.]

   19.   See Piano Factory Group, Inc. v. Schiedmayer Celesta GmbH, 11 F.4th 1363, 2021 USPQ2d 913, at *10 (Fed. Cir. 2021) ("A party asserting a false association bar to registration under section 2(a) need not have proprietary rights to a name as long as the party has a reasonable belief that it will be or is being damaged by the false suggestion of a connection between a person and the challenged mark."); Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837, at *3-4 (Fed. Cir.) 2020), reh’g en banc denied, 981 F.3d 1083, 2020 USPQ2d 11438 (Fed. Cir. 2020), cert. denied, 142 S. Ct. 82 (2021); International Nutrition Co. v. Horphag Research Ltd., 220 F.3d 1325, 55 USPQ2d 1492, 1496 (Fed. Cir. 2000); Books on Tape Inc. v. Booktape Corp., 836 F.2d 519, 5 USPQ2d 1301, 1302 (Fed. Cir. 1987); Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021, 2024 (Fed. Cir. 1987),on remand, 5 USPQ2d 1622 (TTAB 1987), rev’d, 853 F.2d 888, 7 USPQ2d 1628 (Fed. Cir. 1988) ("This is true irrespective of the grounds upon which the opposer relies in asserting the nonregistrability of applicant’s mark").

 20.   See Jewelers Vigilance Committee Inc. v. Ullenberg Corp.,823 F.2d 490, 2 USPQ2d 2021, 2024 (Fed. Cir. 1987), on remand, 5 USPQ2d 1622 (TTAB 1987), rev’d, 853 F.2d 888, 7 USPQ2d 1628 (Fed. Cir. 1988); Otto Roth & Co. v. Universal Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981); Golomb v. Wadsworth, 592 F.2d 1184, 201 USPQ 200, 201 (CCPA 1979).

University of Kentucky v. 40-0, LLC, 2021 USPQ2d 253, at *13, *15 (TTAB 2021) (opposer demonstrated entitlement to a statutory cause of action by establishing that it has a present or prospective interest in using the term 40-0); Milwaukee Electric Tool Corp. v. Freud America, Inc., 2019 USPQ2d 460354, at *4-5 (TTAB 2019) (standing established because parties are competitors in the power saw blade industry), civil action filed, No. 1:20-CV-00902 (D. Del. July 2, 2020) (transferred from M.D.N.C.); Performance Open Wheel Racing, Inc. v. United States Auto Club Inc., 2019 USPQ2d 208901, at *2 (TTAB 2019) (standing established because parties are competitors in arranging automobile racing events); Grote Industries, Inc. v. Truck-Lite Co., LLC, 126 USPQ2d 1197, 1201 (TTAB 2018) (standing established because parties are competitors in the light truck industry), judgment rev’d and vacated by consent decree, No. 1:18-cv-00599 (W.D.N.Y. June 8, 2022); Poly-America, L.P. v. Illinois Tool Works Inc., 124 USPQ2d 1508, 1512 (TTAB 2017) (standing established by plaintiff showing that it is engaged in the manufacture or sale of the same or related goods and that the product in question is one which could be produced in the normal expansion of plaintiff’s business); Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d 1468, 1487 (TTAB 2017) (opposer’s status as competitor establishes standing to oppose registration of product configuration); Apollo Medical Extrusion Technologies, Inc. v. Medical Extrusion Technologies, Inc., 123 USPQ2d 1844, 1848 (TTAB 2017) (opposer established that it is a competitor of Applicant and that it received a cease and desist letter from applicant); Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 109 USPQ2d 1949, 1951-52 (TTAB 2014) (opposer established it is a manufacturer of the same or related goods as applicant and applicant did not contest opposer’s standing), vacated on other grounds and remanded, 786 F.3d 960, 114 USPQ2d 1827 (Fed. Cir. 2015); Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1760-61 (TTAB 2013) (petitioner established and respondent admitted that petitioner is a competitor using the term at issue as part of its domain name), aff’d, 565 F. App’x 900 (Fed. Cir. 2014), (mem.); Miller v. Miller, 105 USPQ2d 1615, 1618-19 (TTAB 2013) (opposer established it has a commercial interest in using MILLER LAW GROUP as a competitor and based on cease and desist letter showing business interests affected); Corporacion Habanos SA v. Rodriquez, 99 USPQ2d 1873, 1876 (TTAB 2011) (promoter or manufacturer of goods labeled with the same indication of geographic origin where plaintiff does not have a pending application, is not using the term in the United States, and is not required to being using the term at all); Kistner Concrete Products Inc. v. Contech Arch Technologies, Inc., 97 USPQ2d 1912, 1918 (TTAB 2011) (competitor in industry has a real interest in cancelling registration for product configuration); Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, 1553 (TTAB 2009) (competitors and retailer of the goods in the applications have demonstrated a real interest in preventing registration of the proposed marks); Corporacion Habanos S.A. v. Anncas Inc., 88 USPQ2d 1785, 1787 (TTAB 2008) (primarily geographically deceptively misdescriptive and deceptive claims); Saint-Gobain Corp. v. 3M Co., 90 USPQ2d 1425, 1428 (TTAB 2007) (standing to oppose registration of mark for single color for coated abrasives established by opposer’s evidence of use of various colors on coated abrasives); Target Brands Inc. v. Hughes, 85 USPQ2d 1676, 1679 (TTAB 2007) (standing based on opposer’s privity relationship with company that has competitive right to use mark descriptively); Kellogg Co. v. General Mills Inc., 82 USPQ2d 1766, 1767 (TTAB 2007) (commercial interest in allegedly descriptive term); Plyboo America Inc. v. Smith & Fong Co., 51 USPQ2d 1633, 1634 (TTAB 1999) (standing where opposer a competitor in the industry, a direct competitor of applicant, and one who used the mark at issue on or in connection with its product); Binney & Smith Inc. v. Magic Marker Industries, Inc., 222 USPQ 1003, 1010 (TTAB 1984).

Cf. Great Seats Ltd. v. Great Seats Inc., 84 USPQ2d 1235, 1244 n.10 (TTAB 2007) (defense of unclean hands, even if established, does not deprive petitioner of standing).

 21.   See, e.g., M/S R.M. Dhariwal (HUF) 100% EOU v. Zarda King Ltd., 2019 U.S.P.Q.2d 149090, at *4 (TTAB 2019) (standing to assert a § 2(c) claim may be established by facts that plaintiff is a competitor and has a present or prospective right to use the name).

If a plaintiff can show an entitlement to a statutory cause of action on one ground, it has the right to assert any other grounds in an opposition or cancellation proceeding. [ Note 22.]

   22.   See Hole In 1 Drinks, Inc. v. Lajtay, 2020 USPQ2d 10020, at *3 (TTAB 2020) (once standing shown on one ground, plaintiff has right to assert any other ground in proceeding); Poly-America, L.P. v. Illinois Tool Works Inc., 124 USPQ2d 1508, 1512 (TTAB 2017) (if petitioner can show standing on the ground of functionality, it can assert any other grounds, including abandonment); Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477, 1479 (TTAB 2017) (standing established based on surname claim sufficient to establish standing for any other ground); Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1481 (TTAB 2017) (opposer established its standing as to genericness ground of certification mark and was entitled to assert any other ground); Corporacion Habanos SA v. Rodriquez, 99 USPQ2d 1873, 1877 (TTAB 2011) (because petitioners alleged standing as to at least one ground, primarily geographically deceptively misdescriptive, they may assert any other legally sufficient claims including those under Section 2(a), the Pan American Convention and fraud); Enbridge, Inc. v. Excelerate Energy LP, 92 USPQ2d 1537, 1543 n.10 (TTAB 2009), (citing Liberty Trouser Co. v. Liberty & Co., Ltd., 222 USPQ 357, 358 (TTAB 1983)).

Have you been opposed, had a petition to cancel or had an extension of time to oppose filed against you?

Email us at W@TMK.law or call us at 1-651-500-7590. We May Be Able to Help.

Examples of Likelihood of Confusion or Confusingly Similar Trademarks (TTAB)

Conflicting Marks

Case reference

SUPER CHIRO TEA for "herbal teas for medicinal purposes" so resembled opposer's previously used mark CHIROKLENZ for a detoxifying herbal tea, as to be likely to cause confusion among purchasers.

The Board found that applicant took "affirmative steps to cause confusion and to associate SUPER CHIRO TEA with CHIRO-KLENZ tea." These affirmative steps included using the URL www.chiroklenzforless.com and using confusingly similar trade dress.

Edom Laboratories, Inc. V. Lichter (TTAB 2012)

L'OREAL PARIS for "aloe vera drinks" so resembles opposer's previously used and/or registered L'OREAL and L'OREAL PARIS marks for a full range of cosmetics, skin care, and hair care products, some that include aloe vera as an ingredient, as well as for a variety of services, as to be likely to cause confusion.

L'OREAL S.A. v. MARCON, (TTAB 2011)

 GULPY, when used in connection with "portable animal water dishes and animal water containers sold empty" does not so resemble BIG GULP, GULP, or any of opposer's other "Gulp" marks as to be likely to cause confusion, to cause mistake, or to deceive.

7-Eleven v. Wechsler, (TTAB 2007)

OIL ZONE and WASH ZONE (junior marks) for oil change and car wash services are sufficiently similar to (senior user) AUTOZONE mark for retail auto parts sales:

• All marks have two words, with “Zone” as second word;
• Words in marks are in same font and are slanted in same direction;
• First letter of both words is larger than other letters in all marks;
• All marks feature bar designs that suggest movement or speed.

Marks must be viewed in their entireties, and despite certain dissimilarities, prominent similarities between marks may lead consumers to believe that OIL ZONE and WASH ZONE were extensions of AUTO ZONE.

AutoZone Inc. v. Strick, 88 USPQ2d 1225 (7th Cir. 2008)

“Girl Design” senior mark for U.S. parboiled rice sold in Saudi Arabia was infringed by “Girl with a Hat Design” used on bags of U.S. parboiled rice sold in Saudi Arabia, even though senior user’s design depicts visibly Asian girl, whereas junior user’s design incorporates scarf or hat on girl's head, since marks both depict young women with similar hair, dress, and features, posed behind rectangular shape, holding bowl of rice, and utilize same red, yellow, and black color scheme.

Findings: the Lanham Act requirements were met such that ARI's Girl Design was protectable because the image of a girl icon being used to sell rice is not intrinsic to rice as a product

American Rice Inc. v. Producers Rice Mill Inc., 86 USPQ2d 1162 (5th Cir. 2008).

In assessing likelihood of confusion marks at issue, marks must be compared in their entireties. CHI PLUS mark for electric massage apparatus is likely to cause consumer confusion with CHI design mark for legally identical goods, since word “Chi” is integral component of parties' marks, and addition of word “plus” to mark already established and in use for electric therapeutic massagers is likely to cause confusion, mistake, or deception. In this case, other differences between parties' marks are unlikely to prevent confusion.

China Healthways Institute Inc. v. Xiaoming Wang, 83 USPQ2d 1123 (Fed. Cir. 2007).

Goods or Services Need Not Be Identical: ON-LINE TODAY for Internet connection services held likely to be confused with ONLINE TODAY for Internet content

On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000)

Goods or Services Need Not Be Identical: MARTIN’S for wheat bran and honey bread held likely to be confused with MARTIN’S for cheese

In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984)

Goods or Services Need Not Be Identical: ENYCE for custom automotive accessories held likely to be confused with ENYCE for various clothing items and accessories directed to the urban lifestyle market.

L.C. Licensing, Inc. v. Berman, 86 USPQ2d 1883 (TTAB 2008)

Goods or Services Need Not Be Identical: CONFIRM for a buffered solution equilibrated to yield predetermined dissolved gas values in a blood gas analyzer held likely to be confused with CONFIRMCELLS for diagnostic blood reagents for laboratory use

In re Corning Glass Works, 229 USPQ 65 (TTAB 1985)

Goods or Services Need Not Be Identical: LAREDO for land vehicles and structural parts therefor held likely to be confused with LAREDO for pneumatic tires

In re Jeep Corp., 222 USPQ 333 (TTAB 1984)

Marks may be confusingly similar in appearance despite the addition, deletion, or substitution of letters or words: TMM held confusingly similar to TMS, both for systems software

Weiss Associates Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990)

 Similarity in Sound – Phonetic Equivalents: Acknowledging that “there is no correct pronunciation of a trademark” and finding ISHINE (stylized) likely to be confused with ICE SHINE, both for floor-finishing preparations

Centraz Industries Inc. v. Spartan Chemical Co. Inc., 77 USPQ2d 1698, 1701 (TTAB 2006)

Similarity in Sound – Phonetic Equivalents: SEYCOS and design for watches held likely to be confused with SEIKO for watches and clocks

Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461 (TTAB 1985)

 Similarity in Sound – Phonetic Equivalents: CAYNA (stylized) for soft drinks held likely to be confused with CANA for, inter alia, canned and frozen fruit and vegetable juices

In re Great Lakes Canning, Inc., 227 USPQ 483 (TTAB 1985)

Similarity in Sound – Phonetic Equivalents: ENTELEC and design for association services in the telecommunication and energy industries held likely to be confused with INTELECT for conducting expositions for the electrical industry

In re Energy Telecommunications & Electrical Ass’n, 222 USPQ 350 (TTAB 1983)

Similarity in Sound – Phonetic Equivalents: CRESCO and design for leather jackets held likely to be confused with KRESSCO for hosiery

In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963)

Similarity in Meaning: CITY WOMAN held likely to be confused with CITY GIRL, both for clothing

In re M. Serman & Co., Inc., 223 USPQ 52 (TTAB 1984)

Similarity in Meaning:  GAS CITY (“GAS” disclaimed) held likely to be confused with GASTOWN, both for gasoline

Gastown Inc., of Delaware v. Gas City, Ltd., 187 USPQ 760 (TTAB 1975)

Similarity in Meaning: AQUA-CARE (stylized) held likely to be confused with WATERCARE (stylized), both for water-conditioning products

Watercare Corp. v. Midwesco-Enterprise, Inc., 171 USPQ 696 (TTAB 1971)

LAPP and LAPP CABLE identical for all practical purposes (Interpace Corp. v. Lapp, Inc., 721 F. 2d 460 (3rd Cir. 1983))

 Similarity between the marks SIDE DISH and BANQUET SIDE DISH FOR ONE is obvious (Tree Tavern Products, Inc. v. Conagra, Inc., 640 F.Supp. 1263, 1270 (D.Del.1986))

Where dominant portions of two marks, COUNTRY FLOORS and COUNTRY TILES are the same, confusion is likely(Country Floors, Inc. v. Gepner, 930 F.2d 1056 (3d Cir.1991) )

As cited in Fisons Horticulture, Inc. v. Vigoro Industries, Inc., 30 F. 3d 466 - (3rd Cir. 1994)

Have you received a refusal?

Call us at 1-651-500-7590. We May Be Able to Help. If you have other Marks that you are thinking of registering–CALL US FIRST. Many potential trademark owners may have marks that may be registerable under some conditions and not under others. Guessing wrong can be costly.     

TMk® Email W@TMK.law best or call 1-651-500-7590   (Calls are screened for ‘trademark’ and other applicable reasons for the call) for U.S. Licensed Attorney for Trademark Searches and Applications; File or Defend an Opposition or Cancellation; File or Defend an Expungement or Reexamination of a trademark registration; Trademark Refusal; Brand Positioning

For more information from Not Just Patents, see our other pages and sites:      

USPTO TESS Trademark Product Line  TMPL.US.com

TEAS Application TEAS Plus  Where to trademark search?

Trademark e Search  Strong Trademark  

Common Law Trademarks   Trademark A-Z

Grounds for Refusal  ITU unit action

Tm1a.com: Why 1(a)? Tm1b.com: Why 1(b) trademark?

Trademark Disclaimers Trademark/Patent Assignment

Examples of Disclaimers

Patent, Trademark & Copyright Inventory Forms

Trademark Search Method TEAS Standard application    

How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

Self-authenticating specimen? Trademark ID manual

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Change Trademark or Patent Ownership    

 Opposition Proceeding    

TTAB Discovery Conference Checklist

Lack of standing is not an Affirmative Defense

Trademark Register FAQ  Definition: Clearance Search

teas plus vs teas standard  approved for pub - principal register

Amend to Supplemental Register?

Trademark Search Hack-Use the same method as USPTO   

Experience appearing before the Board (TTAB)

Trademark Specimen  Statement of Use (SOU)

How To Show Acquired Distinctiveness Under 2(f)

Trademark  Refusal  Opposition Period

Which TEAS application is less likely to be refused?

Examples of Composite or Unitary Marks  

TEAS Plus refusal rate  tesssearch  Brand Positioning Help

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation

Notice of Opposition trademark sample

What is a trademark specimen?     Trademark Searching

TBMP 309 Grounds Opposition/Canc.  

 Examples and General Rules for Likelihood of Confusion

   DuPont Factors

What are Dead or Abandoned Trademarks?

Can I Use An Abandoned Trademark?  

3D Marks Trade Dress TTAB Extension of Time  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS Plus and TEAS Standard  

Extension of Time to Oppose

 tess search  Examples of Unusual Trademarks

  Extension of time to answer  

What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Overcoming Merely Descriptive Refusal  TmkApp Checklist

Likelihood of Confusion 2d  TMK.law–Knowing the law matters

Acquired Distinctiveness Examples  2(f) or 2(f) in part

Definition: Likelihood of confusion

Merely Descriptive Trademarks  Merely Descriptive Refusals

Definition of Related goods and services for trademarks

ID of Goods and Services see also Headings (list) of International Trademark Classes How to search ID Manual

How to TESS trademark search-Trademark Electronic Search System

Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests  Trademark Glossary

Pseudo Marks    How to Reply to Cease and Desist Letter

Why Hire A Private Trademark Attorney?

 Merely Descriptive Refusal   Overcome Likelihood Confusion

Common Law Rights for Domain Names

Steps in a Trademark Opposition Process   

Published for Opposition  What is Discoverable in a TTAB Proceeding Affirmative Defenses  

What is the Difference between Principal & Supplemental Register?   

What is a Family of Marks? What If Someone Files An Opposition Against My Trademark? Statutory Cause of Action (aka Standing)

Tips for responding to tm Refusal  

DIY Overcoming Merely Descriptive Refusals

TESS Trademark Trademark Registration Answers TESS database  

Trademark Searching Using TESS  Trademark Search Tips

©2008-2023 All Rights Reserved. Not Just Patents LLC

Email: W@TMK.law. This site is for informational purposes only and is provided without warranties, express or implied, regarding the information's accuracy, timeliness, or completeness and does not constitute legal advice. No attorney/client relationship exists without a written contract between Not Just Patents LLC and its client. Past performance is no guarantee of future results. Privacy Policy Contact Us