One of the biggest obstacles that can come up in registering a trademark is the potential for a trademark application to be challenged by an outside party. When pending marks have been challenged by a third party, the applicant has the right to defend their own mark for validity, using one of several defenses. These broadly fall into one of two categories: absolute and relative. The choice of which defense to use will depend on what grounds the third party is using to challenge the pending mark. Absolute grounds are dependent on the pending application alone, while relative grounds depend on third party’s opposing evidence. The two most common relative grounds are priority and likelihood of confusion. In any case, an opposing party must bring evidence forward that challenges the pending mark’s validity.

Priority Grounds

A defense against priority requires evidence to show that the mark has been used before. This evidence can range from original application dating at the United States Patent and Trademark Office (USPTO) to proof of use via company cards or signs. This evidence is all relative to the evidence the third party opposition brings forth: each party is aiming to prove that they used the disputed mark first. The Trademark Trial Appeal Board (TTAB) reviews both sides of evidence and determines priority rights to the mark. Priority claims are usually used for identical, or almost identical, marks.

Likelihood of Confusion

If the pending mark is being challenged under the relative ground of likelihood for confusion, it is examined under several factors in comparison to the mark that opposes the application. In general, there is no dispute as to whose trademark came first under this defense: the established trademark is challenging that the pending mark is likely to be confused with its own. Every jurisdiction’s rules vary slightly, but in general, the following principles are examined:

• Strength of the senior user’s mark
• Similarity of the products or services
• Similarity of the marks
• Evidence of actual confusion
• Type of consumer knowledge by the buyer of the products
• Relation of products or services

Equitable Defenses

If a party instead decides to use an affirmative defense, the equitable defense is a form of admitting some responsibility while asking the TTAB for an excused allowance because any penalization would be unfair. Basically, the owner of the challenged mark admits that the challenge has merit and that its allegations are correct, but explains the similarity in a way that limits liability or blocks it entirely. These equitable defenses can come in several forms. While they are legally allowed, these defenses only have limited weight and are not usually used on their own. Since the UPSTO only controls the registration of marks and does not hear infringement issues, it is limited when hearing evidence of a mark’s actual use.

Trademark Opposition Attorneys

Getting hit with trademark opposition is not the end of your fight; your mark still has the potential to become registered. If you need defense in a trademark opposition, contact one of our Trademark Opposition Attorneys at 855-473-8474.