Why Hire a Not Just Patents Trademark Attorney for  an application, response to office action or TTAB Proceedings?

Aim Higher ®. Hiring an experienced trademark attorney matters.

A study titled DO TRADEMARK LAWYERS MATTER? reported by Stanford Technology Law Review  (16 STAN. TECH. L. REV. 583 (2013)) looked at the issue of legal experience for trademark matters. This study found that  “[o]verall, applications prosecuted by experienced counsel were 50% more likely to register than those handled by inexperienced pro se applicants (20 percentage points).”

An experienced attorney mattered even more for an opposition. “[W]hen an opposition was filed after publication, experienced attorneys were able to successfully overcome such oppositions at a 55% higher rate than inexperienced pro se applicants (18 percentage points).”

Representing the Underdog: It Isn’t All About Fame

Most of our clients are small businesses trying to protect their trademarks, often from someone bigger who is claiming that the smaller business trademark is likely to be confused with the mark of the bigger company. When big companies try to enforce their trademark rights beyond what is reasonable and legal, it can be called trying to enforce a “right in gross”  or can be called “trademark bullying.” Many trademark oppositions or cancellations are preceded with a cease and desist letter from the potential opposer.

Even if the TTAB (USPTO Trademark Trial and Appeal Board) finds that an opposer has proven that its marks are famous for purposes of likelihood of confusion, fame alone is not sufficient to establish likelihood of confusion. If that were the case, having a famous mark would entitle an opposer to a right in gross, and that is against the principles of trademark law. See University of Notre Dame du Lac v. J.C. Gourmet Food Imports, Co., Inc., 703 F.2d 1372, 217 USPQ 505, 507 (Fed. Cir. 1983). Fame is just one factor in a likelihood of confusion analysis (the fifth DuPont factor of thirteen). The other du Pont factors must also be considered when they are applicable.

Differences in the goods and services, different commercial impressions by the marks, may also be significant countervailing factors dispelling any likelihood of confusion. See Blue Man Productions Inc. v. Tarmann, 75 USPQ2d 1811, 1819-1820 (TTAB 2005), rev'd on other grounds, Civil Action No. 05-2037 (D.D.C. April 3, 2008). Whether the marks are confusingly similar may depend on the different connotations of the marks.

What is commercial impression? How is commercial impression created?

A product or service commercial impression can be created by their marketing emphasis. Promark Brands v. GFA Brands (TTAB 2015). Sharing goodwill between your own products and services can be a good thing.

GOOD SHARING:  Sharing trademark goodwill between products or services or between trademarks depends on creating a consistent commercial impression; goodwill and acquired distinctiveness go hand in hand. Generally, marks with different commercial impressions do not share goodwill. See In re Parkway Machine Corp., 52 USPQ2d 1628 (TTAB 1999) ("The existence of applicant's other registrations covering different marks is largely irrelevant to the question of acquired distinctiveness of the instant mark."); see also In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001) ("A mark is the legal equivalent of another if it creates the same, continuing commercial impression such that the consumer would consider them both the same mark."). In re Franklin County Historical Society (TTAB 2012) (COSI too different in commercial impression to be useful to applicant in establishing acquired distinctiveness of "CENTER OF SCIENCE AND INDUSTRY.")

BAD SHARING: If you are trying to avoid a likelihood of confusion with a similar trademark, creating a different marketing emphasis or different mental image in the mind of the customer may help to avoid confusion. Some examples of where confusion was found even where marks had dissimilarities as to their appearance and sound:

  • Proctor & Gamble Co. v. Conway, 419 F.2d 1332, 164 USPQ 301, 304 (CCPA 1970) (holding MISTER STAIN likely to be confused with MR. CLEAN on competing cleaning products);
  • Ralston Purina Co. V. Old Ranchers Canning Co., 199 USPQ 125 (TTAB 1978) (holding TUNA O' THE FARM for canned chicken likely to be confused with CHICKEN OF THE SEA for canned Tuna);
  • Downtowner Corp. v. Uptowner Inns, Inc., 178 USPQ 105 (TTAB 1973) (holding UPTOWNER for hotel and restaurant services likely to be confused with DOWNTOWNER for substantially identical services).

Appearance, Sound, Connotation and Commercial Impression

The key likelihood of confusion factor in many cases is whether the marks of the respective parties are confusingly similar, when compared in their entireties as to appearance, sound, connotation and commercial impression. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).

Commercial Impression Comes From the Specimen Of Use

To ascertain the manner or use and the commercial impression engendered by the term sought to be registered, one must look at the specimen of record. In re Wakefern Food Corp., 205 USPQ at 77; In re Bose Corp., 546 F.2d 893, 192 USPQ 213, 216 (CCPA 1976); In re Restonic Corp., 189 USPQ 248, 249 (TTAB 1975). The term sought to be registered must indicate the origin of the services and be of such a nature that ordinary consumers would consider the term to be a trademark. In re Brock Residence Inns, Inc., 222 USPQ 920, 921-922 (TTAB 1984).

Connotation or meaning can be tested by seeing if the marks are interchangeable

In re Finlay Fine Jewelry Corp., 41 U. S. P. Q.2d 1152, 1154 (while the Board did not rule on whether the mark was geographically descriptive it did find that “'NY' is clearly an abbreviation for `New York' and, thus, while visually different, `NY' and `New York' are interchangeable as the two terms have the identical meaning or connotation”).

Connotation may depend on use. Aries Sys. Corp. v. World Book Inc., 26 U. S. P. Q.2d 1926, 1932 (TTAB 1993) (“Moreover, when considered in their entireties, the marks have somewhat different connotations, due to their highly suggestive nature, when applied to specifically different products. Opposer's mark [KNOWLEDGE FINDER] suggests a product designed to locate particular knowledge about a topic, whereas applicant's mark [INFORMATION FINDER] conveys the idea of a product useful for finding more generalized information on a subject. These distinctions in the marks make it less likely that confusion, mistake or deception will occur with respect to origin or affiliation of the parties products.”).

Dictionaries can be used to show meaning or connotation but are not controlling. In re Homes & Land Publ'g Corp., 24 U. S. P. Q.2d 1717, 1718 (TTAB 1992) (“Even knowing full well what applicant's goods are, the dictionary meanings are not enough to establish that the public views this term as the common name for these goods. Thus, while the dictionary supports the finding that RENTAL GUIDE is certainly descriptive of applicant's goods, we cannot say that it is sufficient evidence to find the term generic.”). Berner Int'l Corp. v. Mars Sales Co., 26 U. S. P. Q.2d 1044, 1050 (3d Cir. 1993) (“A Court accepting a dictionary entry at face value is in effect adopting the lexicographical judgment as its own, even though such a judgment might be based on printed matter which, if offered in evidence, would not be controlling.”).

The degree of similarity required for confusing similarity depends on the goods or services. Whenever the goods or services of the respective parties are similar in kind and/or closely related, the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as would be required with diverse goods. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ 1698 (Fed. Cir. 1992); and In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987).

The test for confusing similarity is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).

How Often Are Trademarks Opposed?

Oppositions and Cancellations are Uncommonly Instituted But Are Real Threat Once Instituted

As reported in The USPTO Trademark Case Files Dataset: Descriptions, Lessons, and Insights, January 2013.

The vast majority of published applications proceed directly to registration without any opposition. An opposition proceeding instituted for only 2.8 percent of 4.0 million published applications with prosecution event-data coverage in a recent USPTO study. For those applications no longer pending, the data indicate that the opposition was sustained [the trademark did not issue]  in about 44.8 percent of observations in which an opposition was instituted.

A cancellation proceeding is instituted for only about 1.1 percent of the 3.4 million registrations with prosecution event-data coverage. For those registrations with proceedings no longer pending, the data indicate that a cancellation was granted in about 44.9 percent of observations in which a cancellation proceeding was instituted.

Who Can Bring An Opposition or Cancellation (Who has Standing?)

How To Show Standing For A Trademark Opposition or Cancellation

(extracted from TBMP 309.03(b) January 2017)

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

   Standing Claim                                                       Case references

A claim of likelihood of confusion that is not wholly without merit [ Note 7.], including claims based upon current ownership of a valid and subsisting registration [ Note 8.] or prior use of a confusingly similar mark. [ Note 9.] A registration on the Supplemental Register may be sufficient to establish standing [ Note 10.];

7.   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).

 8.   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); Research in Motion Limited v. Defining Presence Marketing Group Inc., 102 USPQ2d 1187, 1190 (TTAB 2012) (pleaded registrations of record); 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) (pleaded registrations made of record); Brown Shoe Co. v. Robbins, 90 USPQ2d 1752, 1754 (TTAB 2009) (pleaded registration made of record); Bass Pro Trademarks LLC v. Sportsman’s Warehouse Inc., 89 USPQ2d 1844, 1849 (TTAB 2008) (pleaded registrations properly made of record); Corporacion Habanos S.A. v. Anncas Inc., 88 USPQ2d 1785 (TTAB 2008) (pleaded registration made of record); 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).

 9.   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); 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).

 10.   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 11.];

 11.   See Empresa Cubana del Tabaco v. General Cigar Co., 111 USPQ2d 1058, 1062 (Fed. Cir. 2014) (plaintiff’s application refused based on defendant’s registrations); Saddlesprings Inc. v Mad Croc Brands Inc., 104 USPQ2d 1948, 1950 (TTAB 2012) (standing adequately alleged by allegation that petitioner’s intent-to-use application has been refused based on respondent’s registrations); 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 received permission from the U.S. Dept. of Treasury to file an application and such application is suspended); 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 12.];

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

Plaintiff belongs to class of potential purchasers it alleges are disparaged or brought into contempt or disrepute by defendant’s mark [Note 13];

13. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); McDermott v. San Francisco Women's Motorcycle Contingent, 81 USPQ2d 1212 (TTAB 2006), aff’d unpub’d, 240 Fed. Appx. 865 (Fed. Cir. 2007), cert. den’d, 552 U.S. 1109 (2008).

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 14].

14. 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 Corporation v. Remington Products, Inc., 222 USPQ 93, 96 (TTAB 1984).

A counterclaimant's standing to cancel a pleaded registration is inherent in its position as defendant in the original proceeding. [Note 15.]

 15.   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 standing. [Note 16.] For example, when descriptiveness or genericness of the mark is in issue, plaintiff may plead (and later prove) its standing 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 17.]

 16.   See 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").

 17.   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); 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); 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).

If a plaintiff can show standing on one ground, it has the right to assert any other grounds in an

opposition or cancellation proceeding. [Note 18.]

 18.   See 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) (averments of priority, likelihood of confusion and damage resulting therefrom accepted to show petitioner’s standing with respect to pleaded grounds of fraud and abandonment despite unavailability of likelihood of confusion claim under Trademark Act § 2(d),15 U.S.C. § 1052(d) because registration more than five years old).


Call 1-651-500-7590 or email WP@NJP.legal for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

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Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals   FilingforTrademark.com

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses

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