In 2021 the United States Patent and Trademark Office granted 367,945 trademark registrations. But what happens if the USPTO approves a trademark that is too similar to your own?
When someone files a new trademark application, an “examining attorney” at the USPTO is responsible for reviewing the application and determining if it can be approved for registration. The examining attorney must compare the trademark in the new application to all active trademarks in the USPTO’s database. This helps the examiner to determine whether or not there is already a similar trademark on the federal register, which should block the trademark currently under review.
If a trademark application is “approved” by the USPTO that is too similar to yours, then it becomes your responsibility to file a formal opposition to block the registration of that similar trademark.
This filing, called a Notice of Opposition, must be filed within the thirty-day “Opposition Period” scheduled by the USPTO. Because a Notice of Opposition is a formal legal proceeding before an administrative court, it is important for you to know the risks, timeline, and requirements associated with this type of legal proceeding.
What you can do if the USPTO approves a trademark that is too similar to yours
While examining attorneys are skilled trademark attorneys, the scope of their examination is limited to the information contained within the “four corners” of the documents they are reviewing. In other words, the examiners only review what is written in existing registrations to the new applications that are filed. There is no marketplace evidence that comes into the examination process. Examining attorneys also have discretion in their analysis and need to make quick, impartial decisions to keep the trademark application process moving.
Sometimes, this results in the USPTO approving trademark applications that could potentially damage your trademark rights or possibly restrict your ability to expand in the future.
When an application is published for opposition, you will have thirty days to either (1) file an extension of time to oppose (granting an additional thirty or ninety days) or (2) file an opposition. A thirty-day extension of time does not have a fee but a ninety-day extension costs $200 in government fees.
Extensions are generally accepted as a matter of course, giving you time to discuss the merits of the case with an attorney, evaluate the case further, negotiate with the other side, and/or prepare the Notice of Opposition.
Who can file a Notice of Opposition?
A Notice of Opposition can only be filed by someone with a “real” or “legitimate” interest in the outcome of the registration. This bar is typically low, but you can’t file a Notice of Opposition against a trademark application simply because you don’t like the applicant, are offended by the content of the application, or want to interfere with a competitor’s business.
You prove that you have a stake in the outcome by showing how the registration would affect you and your mark. This is called “standing,” or an “entitlement to a statutory cause of action,”–the most common way of demonstrating standing is to show you have prior rights in a trademark, and that the pending application’s registration would harm your trademark rights.
The Board has even found that some Cuban cigar makers (who can’t sell their product in the US) have met the low bar for standing in cases where applicants file trademarks to use confusingly similar names in US commerce.
In rare cases, however, the Board has dismissed proceedings because of a lack of standing. In Philanthropist.com, Inc. v. The General Conference Corporation of Seventh-Day Adventists, a domain name broker attempted to cancel the ADVENTIST trademark owned by a religious corporation in Washington, DC. The petitioner (the person who filed the opposition) purchased the adventist.com domain name to hold it for future sale at an inflated price (a practice the TTAB identified as “warehousing”). The Board found that this was not sufficient grounds for canceling ADVENTIST for “genericness” and the petitioner had not shown its “entitlement to the statutory cause of action” (also called standing).
If you own a trademark and believe a pending application is likely to harm your mark (for one of the reasons below), then there is a very good chance that you have the necessary “interest” to oppose a trademark.
What are the grounds for a Notice of Opposition?
The most common grounds for opposing a trademark application will be that the pending application is likely to confuse consumers. However, in addition to the grounds of “likelihood of confusion,” there are multiple other reasons you can oppose a trademark application after it’s published. You can oppose a mark because:
1. The mark is merely descriptive of its goods and services, and consumers would not recognize it as a brand or trademark
A mark is considered merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of the applicant’s goods or services. For example, APPLE PIE was deemed descriptive for potpourri (that presumably smelled like apple pie). In re Gyulay, 3 USPQ2d 1009 (Fed. Cir. 1987).
2. The mark is generic for the Applicant’s goods and/or services, and the mark is the basic/plain name of the product or service being applied for, like “cafeteria” for a food cafeteria, or “black coffee” for coffee products.
For example, in Gang Cao v. Apple Inc., Opposition No. 91239006 (June 26, 2021), the TTAB found that LIVE PHOTOS was generic for computer software.
3. The mark falsely suggests a connection with you and your business and consumers would believe that there was a connection between the applied-for trademark and you or your business.
For example, if they incorporate the name of your business in their trademark, but you do not necessarily own a registered trademark on that part of your brand, you can still oppose their mark.
4. The mark is primarily merely a surname (last name).
If they try to register a trademark for “Smith Brewing” for beer, you could argue that they cannot own the name “Smith” due to how common it is
5. The mark is functional for its goods and services.
For example, the color neon-yellow cannot be trademarked for safety vests.
6. The applicant is not using the mark or lacks a bonafide intent to use the mark in commerce
For example, they claim to have already begun sales of the mark but you know they only submitted photos of testers/prototypes
7. The mark is geographically descriptive or geographically misdescriptive.
For example, a descriptive trademark is if someone files a trademark for “United States Apple Pie” or “New York Pizza”, and misdescriptive is if someone files for “Italian Limoncello” (from Italy) or “Georgia Barbecue” (from Arizona).
8. The mark would dilute your “famous” mark.
For this standing, you need to meet a higher standard for “fame” and the USPTO may grant you more protections and require less similarity between the two marks.
Each of these claims has specific elements that must be included in the Notice of Opposition. The key to each of these is to show how you will be damaged in addition to the case you’re making.
How to let the USPTO know you want to oppose a trademark
When you want to complain to the USPTO about a pending trademark application, do not reach out to the examining attorney assigned to the application, or any other trademark examining attorney. All Oppositions are filed through the Trademark Trial and Appeal Board, an administrative court under the Federal Rules of Civil Procedure (as modified by the Trademark Trial and Appeal Board Manual of Procedure, also called TBMP.
You, or your attorney, will draft a formal Notice of Opposition, which will look like the image below. A Notice of Opposition should not be a dense, evidence-packed document that attempts to argue every angle of the case. It should be a short recitation of the claims being made, with emphasis on proving that you have standing and that you have properly pleaded at least one grounds for opposition.
You must follow the TTAB’s rules, or the case could be prejudiced and ultimately thrown out.
You will also need to pay the TTAB’s government fees. The cost to file an opposition with the USPTO is $600 per class, plus any legal fees. Some trademark applications are for multiple classes – keep in mind that the $600 fee applies to every class, so a five-class trademark application will cost $3,000 in government fees. Those fees are non-refundable and are not returned, even if you win the case.
If you are not a U.S. citizen or if you represent a business outside of the United States, you will have to hire a U.S. attorney to represent you.
Once your Notice of Opposition is filed, the TTAB sets a trial calendar, and the applicant is given thirty days to respond with an answer.
A sample trial calendar can be found below – the calendar can be modified with permission from the Board or with the other parties’ consent:
If the applicant answers, then the two parties proceed to a limited discovery period and trade information about the marks, consumers’ impressions of the marks, and how the marks are used in commerce.
What happens if a trademark applicant does not respond to a Notice of Opposition?
If the Applicant doesn’t answer, then the TTAB orders a “Notice of Default.” After a Notice of Default is issued, the Applicant has an additional thirty days to explain why they did not file an answer. If there is still no response, the TTAB will rule in your favor and typically cancel the mark you are opposing.
Many times, Applicants do not file an Answer because they have reviewed the Notice of Opposition, weighed the risks, and have accepted the outcome. Others may decide that the cost of defending the registrations outweighs the benefits because TTAB proceedings can cost upwards of $5,000 if completed fully.
Below is a chart depicting the number of oppositions filed with the TTAB from the first quarter of 2021 through the third quarter of 2022.
Other ways to let the USPTO know you believe a trademark is infringing on your rights
If you’re clued in about a filing being made or happen to see a filing you believe will infringe upon your mark, you have an option to alert the USPTO to the issue before they review the application. The first chance to let the USPTO know you believe an application should not be approved is through a Letter of Protest. These are less formal than oppositions because the USPTO handles these, not the TTAB.
The USPTO has a division for attorneys to review the Letters of Protest, and if the attorney who reads your protest believes there is a chance of confusion, they will forward the evidence to the Examining Attorney assigned to the new application. This is a cheaper option than an opposition proceeding and can cause a refusal from the USPTO instead of instigating an adversarial proceeding.
If you miss the publication window, you will still be able to object to the trademark once it has been registered. This is called a Petition to Cancel.
The limitations of USPTO opposition proceedings
While these procedures can be powerful deterrents to would-be infringers to stay away from marks confusing similar to your trademarks, the USPTO does not have enforcement power. This means that the USPTO cannot stop others from using any trademark in the marketplace. That power is reserved for the courts, and it may be necessary to bring a lawsuit against an infringer to protect your rights.
You should have a comprehensive protection plan for your valuable brands and a good relationship with an experienced attorney to develop and execute it.
By protecting your brand at the USPTO and the marketplace, you can build a strong, valuable brand that represents your business.