Trademark Opposition 101

By Charles H. Knull

What is an opposition or cancellation proceeding and what does it mean for your trademark strategy?

Opposition and cancellation proceedings are administrative trials held within the Trademark Trial and Appeal Board, which is a reviewing arm of the U.S. Patent and Trademark Office.  They are one of the ways that disputes between trademark owners can be resolved during the process of registering a U.S. trademark.

An opposition is an action brought against a “published application” by someone who doesn’t want the trademark to register (generally someone with a similar trademark).  When an application for trademark registration is filed, not only is the application reviewed by a Trademark Examiner at the USPTO, but also, if the application is approved, it is published in an issue of the weekly USPTO Official Gazette. Once published, anybody can file objections within 30 days.  Those objections can trigger an opposition proceeding.

A cancellation Proceeding is like an opposition, but it is brought against a Registered Trademark.  For example, sometimes, an applicant will find a registration blocking its application which, upon examination, is determined to be abandoned. The only way to clear the way is to file a cancellation and get the TTAB to cancel the abandoned registration.

These actions are a stripped down trial before the TTAB as judge (no jury), though many times they are handled entirely on paper without an actual oral argument in a courtroom.  Once a Notice of Opposition or Petition to Cancel is filed by the Opposer or the Petitioner (to Cancel), the TTAB issues an Order that establishes the schedule for the proceeding.  Similar to court cases, the dates set are rigid unless the parties can agree to reset them and the TTAB approves.  Generally, the only way to suspend or reset dates is to show legitimate mutual attempts are being made to settle the case without further litigation.

Filing either proceeding involves careful preliminary consideration of success. A rash filing can backfire and even result in a counter-lawsuit in Federal Court for trademark infringement.

Filing a proceeding, however, is much less expensive than going to Federal Court.  But, if filing  does not result in default, or suspension and settlement talks (a good proportion of them do), after about two months, legal fees and disbursements will mount up quickly as the dates set in the Order require various documents to be drafted and filed and for discovery to take place.   While these costs are much less than litigating in court, the costs must be considered from the initial decision.

Understanding the Scope of Your Trademark

By Chuck Knull

Many laymen, and too many lawyers, confuse trademark rights with copyright (and patent rights).

Trademark law, which at its roots is a law intended to protect consumers from making purchases of products which are not what they intended to buy, provides a right for a trademark’s user to keep others away from its mark for similar goods or services. But in no sense is a trademark’s user the “owner” of the term, slogan, or logo which embodies the trademark. On the other hand, a copyright or patent give its owner a bundle of rights that only the owner can exercise.

From time to time, law suits are brought for trademark infringement that are a source of puzzlement and curiosity to trademark lawyers.   There are two recent examples of such relating Upstate New York businesses.

One of the law suits was brought by Dov Seidman, an author and lecturer on the subject of corporate responsibility and the owner of various trademark registrations for the term HOW, against Chobani LLC, the upstate maker of Greek yogurt products. Chobani recently began to use the term “How Matters” in its advertising, relating that term to how it makes its products in an environmental, “corporately responsible” manner. Mr. Seidman objected and then filed suit in Manhattan federal court.

The other law suit involves a loss by a Cooperstown company called Legends Are Forever, owner of a trademark registration for LEGENDS ARE FOREVER that includes clothing, against the shoe and apparel maker Nike.

Whether or not trademark infringement is to be found is based on whether or not there is “likelihood of confusion” by consumers between the trademark used by one side and the trademark used by the other. The cases generally are brought in federal court and determination of likelihood of confusion is based on the evidence presented. The courts have sets of “likelihood of confusion” factors that must be considered. In New York, these are called the Polaroid factors after the 1961 case of Polaroid Corp. v. Polarad Elecs. Corp.

The factors are:

(1) the strength of the mark,

(2) the similarity of the two marks,

(3) the proximity of the products,

(4) actual confusion,

(5) the likelihood of plaintiff’s bridging the gap,

(6) defendant’s good faith in adopting the mark,

(7) the quality of defendant’s products, and

(8) the sophistication of the consumers.

As you can imagine, each one of these factors have a body of case law and analysis helping to define what makes a strong mark, levels of similarity, proximity in terms of marketing and distribution channels, and all of the other factors.

In the LEGENDS ARE FOREVER case, the Court threw the case out because the plaintiff failed to prove one of the basic necessities–USE.

While the plaintiff had the trademark for clothing, it could only show in evidence that Nike had made up a few sample shirts with the trademark on them along with samples with other slogans. These shirts were not sold by Nike. Hence, there could be no confusion where there were not products for consumers to confuse. As an aside, had Nike actually marketed the shirts, some of the other factors, including the fact that the trademark is a slogan (weak) and the presence of other words on the samples that were found could still have resulted in a finding of no likelihood of confusion.

In the HOW case, which is in its early stages, Seidman’s trademark registrations relate to his use of HOW in marketing books and services to executives managing big companies. Chobani’s use of “How Matters” is directed at marketing yogurt to yogurt consumers. Thus, while it remains to be seen what evidence each side might offer, the possibility that an executive (even a person who buys yogurt) is going to purchase yogurt when intending to purchase Mr. Seidman’s books or services seems quite far-fetched. The fact that “How” is a common word, moreover, means that it probably can only be proved to be a weak trademark and is unlikely to get very broad protection. We shall see.

But both of these cases seem to stem from a misunderstanding or at least excessive enthusiasm about the scope of trademark protection. It is not about “owning” a word or phrase. It is only about preventing consumer confusion (and sometimes other abuses of the trademark owner’s goodwill).