Trademark Opposition Lawyer

U.S. Trademark Trial and Appeal Board Case Strategies

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The Trademark Trial and Appeal Board recently released its TTAB filing statistics for fiscal year 2018.   These updated figures include year-to-year changes in the filing of appeals, notices of oppositions, and petitions for cancellations.  It also provides useful information on the disposition of cases. Highlights include the following:  (percentage in parentheses signifies change over 2017) I.   Filings Appeals: 3,223; (+2%) Extensions of time to oppose: 19,208;  (+3.9%) Oppositions: 6,496 (+5.5%) Cancellations: 2,253 (+7.2%) II.   Contested…
A trademark opposition may be commenced based on a likelihood of confusion with a prior registered mark.   The statutory basis for a likelihood confusion cause of action may be found in Section 2(d) of the Trademark Act. To prevail on a Section 2(d) claim, the Opposer must prove by a preponderance of the evidence the following: Standing.  Standing to bring or maintain an action consists of two elements.  First is that the Opposer has…
A trademark opposition may be filed based on one of several grounds.   This includes that the mark is merely descriptive and should be refused registration pursuant to Section 2(e)(1) of the Trademark Act. A trademark is assessed on a continuum of legal strength.  The strongest trademarks (and thus most eligible for trademark protection) are arbitrary or fanciful.  This is usually a coined-term that has no relation to the goods or services.  Suggestive trademarks are next;…
A motion for summary judgment in a trademark opposition or trademark cancellation proceeding before the Trademark Trial and Appeal Board (TTAB) can be an effective strategy.  Summary judgment motions are often are filed near or at the end of discovery, prior to the trial phase of the case.  Sometimes, summary judgment motions are brought even earlier in the proceeding.  If the movant is successful, it can save the moving party the time and expense of…
Over 5,000 U.S. trademark oppositions are filed against trademark applications every year.  Often, the opposer is a competitor of the applicant or a company that believes that it would be damaged if the U.S. trademark application were to proceed to registration. Here are considerations to take into account when determining whether to file a U.S. trademark opposition: 1.   Jurisdiction.   The Trademark Trial and Appeal Board (“TTAB”) is the adjudicative body of the U.S. Patent and…
A recent trademark opposition decision by the U.S. Trademark Trial and Appeal Board is an example in how an Opposer should properly establish use analogous to trademark use. In Dexas International, Ltd v. Ideavillage Products Corp., the Opposer filed an Opposition against Applicant’s Mark, SNACKEEZ DUO  for “beverage ware; household containers for foods; thermal insulated containers for food or beverages; bottles, sold empty for beverages; cups for beverages; insulating sleeve holder for beverage cups;…
A recent trademark cancellation action by Major League Baseball against an individual who had a registration for sports apparel is another victory for well-established brand names. In Major League Baseball Properties, Inc. v. Christopher Webb, MLB petitioned to cancel U.S Reg. No.  4472701 for the mark MAJOR LEAGUE ZOMBIE HUNTER and design, for “clothing, namely, short and long sleeve t-shirts, sweatshirts, jackets, baseball hats, and beanies,” in Class 25, registered on the Supplemental Register.   The…
Prevailing in a TTAB opposition proceeding against a food and beverage company proves to be sweet for the makers of Nutella. In Ferrero S.p.A. v. Ruchi Soya Industries Limited,  Ferrero, who is the owner of the NUTELLA spread brand, opposed Applicant’s mark NUTRELA for a wide variety of food and beverage products in International Classes 29 and 30.  The Opposer relied on four registrations of NUTELLA and NUTELLA and Design for its well-known hazelnut…
No likelihood of confusion this time as the TTAB finds beer and wine to be unrelated goods. In Justin Vineyards & Winery LLC v. Crooked Stave, LLC, Applicant Crooked Stave, LLC sought registration of the word mark HOP SAVANT, with “HOP” disclaimed, for “beer” in International Class 32.  Opposer Justin Vineyards and Winery opposed the application based on a likelihood of confusion with its preexisting registration of the mark SAVANT for wine in International…
A recent trademark opposition is a lesson in what happens when there is a crowded field of similar trademarks. In Inter-Industry Conference on Auto Collision Repair v. LM Industries Group, Inc., Applicant sought registration of the mark ICAR or land vehicles in International Class 12.  Opposer filed a notice of opposition against the ICAR application on the basis that it was likely to cause confusion and dilute Opposer’s rights in its eight registered marks incorporating…