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IP Legal Services
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IP Legal Services
www. ipprocure.com
E-mail:ash@ipprocure.com
Tel: 1-866-387-5386 
TRADEMARK OPPOSITION
Before a trademark application is granted by the U.S. PTO, the application is published for opposition. Trademark opposition generally refers to a proceeding where a person may oppose the registration of the published mark if the published mark will damage his or her mark in some way. The U.S. PTO states that “any person who believes that he or she will be damaged by the registration of a mark may file an opposition, but the opposition may only be filed in response to the publication of the mark in the Official Gazette.” This means that if a person wishes to oppose a registered trademark as opposed to a published trademark, the proceeding must be conducted before the Trademark Trial and Appeal Board, an administrative tribunal of the U.S. PTO.
TRADEMARK OPPOSITION PROCEDURE
In order to prevent a published mark from being allowed, a Notice of Opposition with a fee is required to be filed with the U.S. PTO within 30 days from the date of publication of the mark. The Notice of Opposition must list the reasons why the application must be rejected and the manner in which the opposer will be affected by allowance of the application. These reasons may include a likelihood of confusion with a previously registered mark, descriptiveness of the mark, prior use, etc. It is not necessary that the opposer own a registered trademark to file a Notice of Opposition.
If the opposer wishes to cancel a registered trademark, he or she must file a Petition for Cancellation and pay the required fee. This Petition must include the grounds of cancellation. The grounds of cancellation of a registered trademark depend upon the duration and kind of registration of the mark. For example, for a mark that has been registered for less than five years, the grounds of cancellation will be similar to that of an opposition proceeding such as likelihood of confusion, descriptiveness, prior use, etc. On the other hand, the ground of “prior use” will be inadmissible for a mark registered for more than five years. Also, if the mark has been registered on the Supplemental Register instead of the Principal Register, the ground of “descriptiveness” is inadmissible. The petition must also show that the petitioner will be damaged if the mark is not cancelled.
In addition to the above, an interference proceeding and a concurrent use proceeding may also be initiated at the U.S. PTO. An interference proceeding, seeks to determine who is the first user of the mark and consequently the rightful owner. A concurrent use proceeding determines “an applicant’s right to a registration covering only a part of the country in a situation where another is using the same or a confusingly similar mark
The most common grounds of opposition are abandonment of the mark by the owner, likelihood of confusion, descriptiveness or misdescriptiveness, generic mark, fraud and dilution. For a discussion on the grounds of likelihood of confusion, descriptiveness and generic marks, refer to Chapter II and V.
ABANDONMENT OF THE MARK AS A GROUND OF OPPOSITION
There are several ways that an owner of a mark may abandon his or her mark. Apart from non-usage of the mark in commerce, if the owner fails to respond to an office action by the U.S. PTO or fails to provide the documents requested or to comply with the requirements of the U.S. PTO within the time prescribed, the U.S. PTO will likely abandon the mark. In such a situation, the owner has the option to file a petition to revive this abandoned application. This petition must be filed within two months from the date of issue of the notice of abandonment. Failure to file the petition to revive the application will result in abandonment. Also, in the case of a registered mark, a mark would be considered abandoned if the owner of the mark failed to file a ”Statement of Use” before the sixth year from the date of registration of the mark. In an opposition proceeding, if the opposing party can show that the applicant or registrant has abandoned his or her application, it is likely that the mark will be cancelled by the U.S. PTO.
FRAUD AS A GROUND OF OPPOSITION
If the opposing party can show that the applicant or registrant of the mark committed a fraud upon the U.S. PTO, the mark is likely to be cancelled. Fraud usually occurs when the applicant or registrant has made false statements pertaining to a material issue. A good example of fraudulent behavior is if the applicant or registrant has sworn under oath that he or she has used his or her mark in connection with each and every one of the identified goods or services in the application, but in fact has not done so. Also, in recent years, the TTAB has issued precedential rulings indicating that even a mistake or misstatement by an applicant, trademark holder and/or attorney will constitute fraud (even when not under oath) and cannot be rectified which will result in cancellation of the trademark registration. ‘The client should inform the attorney of the error or take steps to correct the error as soon as it is discovered. Failure to correct a misrepresentation once known, even if originally innocent, constitutes fraud.’ The TTAB adopts a very tough stance on fraud cases and if proven, could result in the cancellation of the application or registration of the mark as the case may be.
Trademark Dilution As A Ground Of Opposition
Trademark dilution practice arises when the trademark owner requires protection for his mark from being used by another on the basis that it “dilutes” or decreases the value of his mark in connection with his goods and services. However, the condition is that the mark be famous or well known in connection with those goods or services. For example, the owners of the famous Apple Computer mark will seek to protect their mark regardless of whether the mark is used by computer or other non- competing industries.
The United States Government codified the Federal Trademark Dilution Act (FTDA) in 1995. This Act offers protection to famous and well known marks even in the absence of customer confusion or competition. Under the Act, the term “dilution” is defined as “the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of:
  1. competition between the owner of the famous mark and other parties, or
  2. likelihood of confusion, mistake, or deception.”,
Therefore, for a mark to qualify for protection under the FTDA, the FTDA merely requires that use of a “famous” mark by a third party causes the dilution of the “distinctive quality” of the mark.
To elucidate further, dilution is basically portrayed as “whittling down” of the identity or reputation of a trade mark or name. Dilution may happen in two ways. The first is by “blurring” or the weakening in the consumer’s mind of the connection between the owner’s mark and the owner’s goods or services; and second by “tarnishment” by which the infringers mark is associated with inferior products or is put to an unpleasant or harmful use. It is said that the blurring hypothesis requires proof that the plaintiff’s mark is likely to be weakened by the defendant’s mark. The standard was raised in the Victoria Secret case in 2003 where the Supreme Court held that actual dilution or the standard of actual harm, rather than likely dilution was required under the Federal Trademark Dilution Act (FTDA).
DEFENSES TO AN OPPOSITION PROCEEDING
When a mark has been opposed, the applicant or registrant has the opportunity to present a defense in favor of the registration, or in case of a registered mark to prevent the cancellation of the mark. The applicant’s defense may be presented to the U.S. PTO for a published mark and before the TTAB in case of a registered mark. It is must be noted that if the opposer’s mark is registered, the defenses maintained by the applicant will hold no value unless the applicant submits a counterclaim to cancel this registration. Some of the commonly used defenses are listed below.
ESTOPPEL, ACQUIESCENCE AND LACHES
Estoppel, acquiescence and laches are common law principles that prevent a party from claiming or denying anything that has already been established as the truth, on the ground of principles and equity. The same principles may act as defenses to an opposition. For example, if the applicant can prove that the opposer had prior actual knowledge of the applicant’s mark but did not previously object to the registration of the applied mark or filed a petition for cancellation of the applicant’s registered mark, the opposer’s notice or petition as the case may be will be denied on the ground of laches and acquiescence. Similarly, if the opposer has permitted the applicant to use the disputed mark, he will be barred from filing a notice or petition to prevent the mark from being registered or cancel a registered mark on the ground of estoppel.
It must be noted that the principle of laches will not be allowed as an equitable defense if likelihood of confusion of the mark is inevitable. However, the defense may be used if the likelihood of confusion is reasonably debatable. Also, the defense of laches may not be used as a defense for descriptive or generic objections.
PRIOR REGISTRATION OF SIMILAR MARK
Another successful defense is that if the applicant has registered a similar mark prior to the registration of the opposed mark, the applicant may defend this registration by showing that the opposer did not object to the registration of the prior similar mark and should therefore be prevented from seeking a cancellation of the applicant’s mark. The principle behind this defense is that if the opposer did not object to similar registered mark, he or she should have no right to oppose the current mark.
It must be noted that a successful defense to an opposition proceeding will ultimately depend on the argument and evidence presented. The above mentioned defenses will not have value if the opposer can show fraud on the part of the applicant or registrant or likelihood of confusion, descriptiveness, and dilution of the mark or that the mark has become generic in nature.

 

 
 
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