Introduction
This two-part article is intended to provide a brief overview of the trademark opposition procedure in the United States. Part I covers considerations for preparing and filing an opposition, and the available remedies. Part II covers considerations for responding to an opposition and also reviews the opposition procedure through a trial and possible appeal. We also discuss some practical considerations for deciding whether to file and how to litigate an opposition.
A trademark opposition is defined as an objection by a third party to a pending federal application after publication, and before a registration has been granted. Oppositions in the United States are therefore categorized as pre-grant, rather than post-grant, proceedings. The parties to an opposition are known as the “Opposer” or “Opponent” (the objecting party) and the “Applicant” (owner of the opposed application).
Who decides trademark oppositions?
Oppositions are filed with the Trademark Trial and Appeal Board (“TTAB”) of the United States Patent and Trademark Office (“USPTO”). The USPTO, an agency of the United States Department of Commerce, administers the national trademark registry of the United States, also known as the “federal” trademark registry.
Each of the 50 individual states in the U.S., plus the U.S. territory of the Commonwealth of Puerto Rico, maintain their own “state” trademark registries. Except for Puerto Rico, however, none of the states currently offers the ability to oppose a state trademark application.
The TTAB is an administrative adjudicatory body residing within the USPTO, authorized by the U.S. Trademark Law (the “Lanham Act”) to hear and decide trademark oppositions. The TTAB has exclusive jurisdiction over trademark oppositions. (The TTAB also hears and decides petitions to cancel federal registrations (trademark cancellation proceedings), appeals from final USPTO decisions on applications (typically where the application has received a final refusal), and certain other proceedings under the Lanham Act.) An opposition cannot be filed in the federal or state trial courts, even as a companion claim to a larger related dispute, such as a trademark infringement complaint. (By contrast, a cancellation proceeding can be brought in a federal trial court under certain circumstances.)
Oppositions are decided by the TTAB’s administrative trademark judges. A panel of three judges hears each opposition and issues a written decision (also known as an “opinion”). TTAB decisions are either unanimous or by a majority (2-1) vote. Dissenting judges can and occasionally do file their own opinions. The administrative judges are very knowledgeable in trademark law, and are appointed by the U.S. Secretary of Commerce, in consultation with the Director of the USPTO. Once appointed the judges serve full-time for the TTAB. Prior to their appointment, judges often have acquired substantial trademark experience in private practice, at the USPTO, or in academia. As of March 2015, the TTAB has 23 judges. A list of the TTAB judges and their backgrounds can be accessed at http://en.wikipedia.org/wiki/ Trademark_Trial_and_Appeal_Board.
When to oppose
Federal trademark applications are published for opposition in the weekly USPTO Trademark Gazette, available electronically or for download via the USPTO website. Once the USPTO publishes an application for opposition, a potential Opposer initially has thirty (30) calendar days within which to file a Notice of Opposition, or a request to extend the time to file a Notice of Opposition.
Unlike China, the United States permits extensions of time to oppose published applications. The initial thirty (30) day opposition period may be extended if the potential Opposer files a written extension request with the TTAB. Note, however, that any request for extension of time is communicated by the TTAB to the Applicant or Applicant’s designated representative (such as outside counsel). Thus even requesting an extension of time puts the Applicant on notice that the potential Opposer has some concerns about the application.
The potential Opposer may file a request for a thirty (30) day extension as a matter of right (without showing cause and without Applicant’s consent). If necessary or desired, the potential Opposer may then file a second request for an additional sixty (60) day extension, again without Applicant’s consent, but this time showing some basis for “cause” for the additional extension request (for example, the potential Opposer’s need to further investigate the matter, to confer with counsel, or to engage or continue in settlement discussions). Alternatively, Opposer may file a single extension request, within the initial thirty (30) day period, without Applicant’s consent, but showing a basis for cause, for a ninety (90) day extension.
Once the potential Opposer has obtained extensions of time totaling ninety (90) days, Opposer can only extend the opposition deadline with Applicant’s consent absent extraordinary circumstances. The TTAB normally permits only one final consented-to extension, for a period of sixty (60) additional days.
An opposition deadline (or any other deadline in an opposition proceeding) that does not fall on a normal business day (Monday through Friday), or that falls on a national public holiday, a local public holiday in Virginia if the USPTO is closed for that holiday, or on any other officially excluded days (for example when the USPTO is closed due to inclement weather), may be met by taking the appropriate action on the next business day.
Issues and strategies between publication and the opposition deadline
Unlike China, the United States is a “first-to-use” trademark jurisdiction.
Use-based trademark rights (also known as “common law” rights) are valid and enforceable if the use occurs within the United States. Thus oppositions can be based purely on owning senior common rights, i.e. an earlier use date prevails over a later filing date. Owning a prior federal application or trademark registration is not required. While common law rights are limited territorially to where the trademark owner can demonstrate substantial and continuous commercial use, plus a reasonable zone of territorial expansion, the geographic scope of common law rights tends not to matter much for oppositions.
Where an application has been filed on the basis of Lanham Act Section 1(b) (Intent-To-Use), Section 44(e) (non-U.S. Applicant’s home country national registration), or Section 66(a) (Madrid Protocol), and applicant’s use has not yet commenced in the United States, Applicant’s earlier filing date (also known as Applicant’s “constructive use date”) will prevail against an Opposer who begins use after the filing date, even though the Opposer’s use may occur before Applicant’s actual date of first use of the mark in the United States. This also means that a potential Opposer needs to be very careful to assure itself that it has senior rights before filing an opposition or even extending the time to oppose.
During the thirty (30) days between publication and the filing of even one extension of time to oppose, the potential Opposer is often well-advised to investigate the Applicant, the possible use of the mark in the application, any seniority of rights issues, and the history of the prosecution of the application, including whether any of the potential Opposer’s marks were cited by the USPTO against the application, and if so, what arguments Applicant made to overcome the citations and achieve publication.
Applicant’s history in other applications, and opposition and cancellation proceedings, is also readily available from the USPTO and TTAB websites, including (typically) all of the pleadings and documents. If Applicant is represented by counsel, then in addition to any website that counsel’s firm maintains, the USPTO and TTAB records can be searched to see what other applications or TTAB proceedings counsel has been involved with, what arguments were made, and what outcomes obtained.
In addition, it is often worthwhile to investigate Applicant’s overall business and its apparent legal and financial resources, to determine how important the mark in the application appears to be to Applicant, and to gauge Applicant’s willingness and ability to defend against an opposition.
Beyond any investigation that the potential Opposer or its counsel may conduct, consideration should be given to utilizing an outside investigator, particularly if evidence of Applicant’s use or non-use of the mark, or information on Applicant’s financial condition, are difficult to obtain through self-action.
During the time between publication and either the expiration of the opposition deadline or the filing of a Notice of Opposition, the potential Opposer should consider whether to send a demand letter to Applicant stating Opposer’s concerns about the application and what steps would resolve those concerns (for example, withdrawal/abandonment of the application, undertaking not to use the mark, or more limited changes to the application). The opposition deadlines can be used to pressure Applicant for a response to the demand letter or, if a settlement has been reached, then to move forward quickly with the preparation and execution of an agreement.
Preparing and sending a demand letter is usually less costly than preparing and filing a Notice of Opposition. Therefore, if Opposer is able to accomplish its goals (for example, abandonment or amendment of the application) with a letter, then sending a letter at this time is a cost-effective approach.
However, sending a demand letter can escalate the seriousness of the dispute, even to the point of Applicant filing court litigation to “pre-empt” a possible trademark infringement claim. Moreover, sending a demand letter threatening an opposition is not generally advisable if the potential Opponent is not willing to follow through and make good on the threat. Consider also whether there is any history of past collaboration or conflict between Applicant and the potential Opposer, and whether a “business-to- business” communication channel exists or could be established to reach a settlement even if Applicant’s counsel proves to be difficult.
1. This is also the best time to carefully assess the validity and strength of the rights on which the potential Opposer would rely if an opposition must be filed. For example, issues to be considered could include:
2. Possible vulnerability of Opposers rights to partial or complete cancellation for non-use (abandonment).
3. Possible vulnerability of Opposer’s rights to cancellation due to improper licensing (“naked license”) or improper assignments or other chain of title defects.
4. Possible infirmities in Opposer’s marks, such as descriptiveness/genericness issues, deceptiveness, geographic descriptiveness or deceptiveness, etc.
5. Other irregularities in the filing and prosecution of Opposer’s federal applications and/or filings to maintain/renew federal registrations.
6. Opposer’s prior knowledge of or acquiescence to Applicant’s use and/or applications for the same or similar marks.
Commencing the opposition
An opposition is commenced by filing a written “Notice of Opposition” with the TTAB. The Notice of Opposition uses similar format, structure, and language to a trademark infringement complaint filed in a federal trial court. Indeed, many of the TTAB rules that govern opposition proceedings are lifted directly from the comparable procedural rules governing federal court litigation. Although a Notice of Opposition can be as lengthy as the Opponent wishes, all that is necessary is a short and plain statement identifying the parties, the opposed application, the marks or other reasons on which the opposition is based, and a request that the TTAB sustain the opposition and refuse registration to the application.
The TTAB now permits (and indeed encourages) oppositions to be filed electronically via the TTAB’s portion of the USPTO website. The TTAB’s electronic filing system is known the Electronic System for Trademark Trials and Appeals (“ESTTA”). See http://estta.uspto.gov/. Note that oppositions against applications based on extensions of protection under the Madrid Protocol (or requests for extensions of time to oppose such applications) must be filed electronically.
An opposition can be filed against all or some of the goods and services covered by the application. In addition, the Opponent can file a single Notice of Opposition against multiple published applications by the same Applicant if the same mark is involved and if the issues as to each application are identical to or substantially overlap with the issues for the other applications. Opponent can also base its opposition on multiple federal trademark registrations and applications, as well as on any common law rights or other grounds Opponent may have. Although unusual, a joint opposition (a single opposition with two or more Opposers) can also be filed in appropriate circumstances.
An opposition is available against applications published by the USPTO for registration on the Lanham Act’s Principal Register (the main register where most federal trademark applications and registrations reside).
Other issues for the notice of opposition
Standing
Opposer must have legal “standing” to oppose. Standing extends to any “person” (which includes corporations, other business entities, and associations) who believes that he, she, or it will be damaged by the registration of the application. The TTAB is generally liberal in finding standing to oppose.
Grounds
Below is a list of the most typical grounds asserted in U.S. oppositions. Note that USPTO examiners can also raise most of these grounds as objections to the application during substantive examination. For example, the USPTO examines applications for conflicts with prior federal applications or registrations.
1. Immoral or scandalous matter – Lanham Act Section 2(a)
2. Deceptiveness – Lanham Act Section 2(a)
3. False suggestion of a connection – Lanham Act Section 2(a)
4. Geographic indication which, if used on or in connection with wine or spirits, identifies a place other than the origin of the goods – Uruguay Round Agreements Act (“UGAA”) Section 2(9)
5. The mark consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof – Lanham Act Section 2(b)
6. The mark consists of or comprises a name, portrait, or signature of a living individual without written consent, or the name, portrait, or signature of a deceased U.S. President without the written consent of the surviving spouse – Lanham Act section 2(c)
7. Priority of rights and likelihood of confusion – Lanham Act Section 2(d)
8. The mark is merely descriptive – Lanham Act Section 2(e)(1)
9. The mark is deceptively misdescriptive – Lanham Act Section 2(e)(1)
10. The mark is primarily geographically descriptive – Lanham Act Section 2(e)(2)
11. The mark is primarily geographically deceptively misdescriptive – Lanham Act Section 2(e)(3)
12. The mark is primarily merely a surname – Lanham Act Section 2(e)(4)
13. The mark comprises matter that, as a whole, is functional – Lanham Act Section 2(e)(5)
14. The mark is likely to cause trademark dilution – Lanham Act Section 43(c)
15. The Applicant has committed fraud on the USPTO – In re Bose Corporation, 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009)
16. Genericness – Lanham Act Section 23
Amending the notice of opposition
With the exception of oppositions against Madrid Protocol applications, Opposer can amend the Notice of Opposition after filing to include additional grounds on which the opposition may be granted. Opposer may amend the Notice of Opposition once as of right after filing and before Applicant answers or otherwise responds to the opposition. Opposer can amend the Notice of Opposition thereafter by consent/ stipulation of the parties or upon a Motion to Amend filed with and granted by the TTAB. Note, however, that oppositions against Madrid Protocol Extensions of Protection (Section 66(a) applications) cannot be amended after filing.
Costs to file an opposition
The USPTO/TTAB fee for filing an opposition is US$300.00 per class of the application opposed. Attorney’s fees are in addition to this cost.
Burden of proof
Opposer has the burden of proof (on a more-likely-than-not, “preponderance of the evidence” standard) to support the allegations in the Notice of Opposition and demonstrate that the TTAB should sustain the opposition.
Effect of the opposition on the application
Even if the opposition is unsuccessful or is later withdrawn, the filing of a Notice of Opposition will delay the grant of a registration to Applicant.
A fully-litigated opposition proceeding to a decision on the merits (from the date a Notice of Opposition is filed to a decision by the TTAB) may take eighteen months to two years to complete. This is a significant delay to registration of the application.
The TTAB’s procedural rules were modified in 2007 to more closely parallel the procedures applicable to federal district court litigation. Therefore, fully-litigating an opposition proceeding to a decision on the merits before the TTAB is an expensive and time-consuming undertaking for both Opposer and Applicant, with costs and attorneys’ fees also similar to court litigation.
Remedies at the TTAB
Remedies at the TTAB are limited to whether the opposition will be sustained (granted) or denied (rejected). If the opposition is sustained, then the application is refused, and the application becomes abandoned (assuming no appeal is taken). If the opposition is denied, then the application will be allowed to register (again assuming no appeal is taken). Occasionally oppositions are sustained in part or denied in part. No injunctive relief can be granted by the TTAB.
Money damages, other monetary compensation, and injunctions are not available at the TTAB. The TTAB cannot award costs or attorneys’ fees to either Opposer or Applicant.
Each party must bear its own costs and fees. If the Opposer has a claim for trademark infringement based on use of the mark, then a lawsuit for trademark infringement must be filed in federal or state court seeking money damages and, if desired, injunctive relief.
End of Part I, Part II of the article will be published on the next issue, Issue 67
