Grounds for Trademark Opposition

Opposition is a legal procedure that allows third parties, who may be worried about confusion with their own trademarks, to question the validity of pending trademarks. There are two main grounds for opposing a pending trademark: absolute and relative.

Absolute Grounds for Opposition

When an opposing party, a business that is questioning the pending trademark, brings opposition for absolute grounds, they have three main categories to choose from.

• Descriptiveness

The opposing party may claim that the pending trademark is misdescriptive. This usually refers to the geographic location that the product claims to describe but wrongfully lays claim to a different region. For example, Champagne is specific to the Champagne region in France. Sparkling wines that are not from this region are not allowed to name their products “Champagne” because it would be geographically deceptive, and therefore misdescriptive.

• Genericness

Pending trademarks are not allowed to lay claim to words that are generic in nature. Marks can either be generic from the start, or they can become generic over time if they have been diluted down to describe general genres of goods. Many now use the term “videotape”, but it was once a trademarked term reserved only for use by the inventor. When a term is used outside of the specific nature of the mark’s product, then the generic term is invalid for registering purposes.

• Bad faith & Fraud

If the opposing party can prove that the pending application was filed under any bad faith or fraudulent circumstances, then it is able to undermine the authenticity of the entire trademark.

Relative Grounds

Under relative grounds for trademark opposition, the opposing party claims that it has prior rights to the mark—that it used the mark first. During relative ground claims, the party opposing the application must prove that the pending trademark is invalid based on its own use of a similar or same mark.

• Priority & likelihood of confusion

The opposing party may bring a claim of priority when there is proof that the existing mark is being confused with the pending mark. This requires the opposing party to be able to prove that their mark was previously established and that there is similarity between its mark and the pending mark.

• Bad Faith

Pending trademarks must be registered under good faith. If the opposing party can prove that a bad faith effort has been made by the pending mark’s owner in regards to relative material (i.e. use dates, style of the mark, and products the mark is used for), then the third party can bring trademark opposition on bad faith grounds. That is, if the applicant is aware that their pending mark is similar to, or likely to be confused with an existing mark, a bad faith opposition is an option.

• Business name, domain name, trade name and use

Similar to priority, a third party that already uses a mark similar to that of the pending trademark may have first claim to the mark, if the mark has already used via a business name, domain name, or trade name.

• Well-known or famous mark

Only the original user can trademark already established marks. This requires the challenging party to prove that it is, in fact, the original user of the mark.

Trademark Opposition Attorneys

Trademark opposition gives third parties the right to challenge a pending mark’s rights to USPTO protection. If you think there is a mark that is wrongfully protected, contact one of our Trademark Opposition Attorneys at 855-473-8474.

Procedural Grounds: Fraud on the USPTO

Beyond the substantive absolute and relative grounds, an opposer may challenge a pending mark on the procedural ground of fraud in procuring the application. Under In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009), fraud on the USPTO requires proof that the applicant knowingly made a false, material representation with the intent to deceive the USPTO. The Federal Circuit in Bose raised the bar significantly, holding that subjective intent to deceive must be proven by clear and convincing evidence—mere negligence or even gross negligence is insufficient.

Common fraudulent statements that opposers allege include false claims of use in commerce on a use-based application, false identification of goods and services in a manner designed to obtain broader coverage than the mark has actually been used for, or inaccurate claims of ownership where the true owner is a different entity.

Dilution as an Opposition Ground

Owners of famous marks have an additional opposition ground under the Federal Trademark Dilution Act, 15 U.S.C. § 1125(c): dilution by blurring or tarnishment. Dilution does not require likelihood of confusion—it requires that the defendant’s mark is likely to impair the distinctiveness of the famous mark (blurring) or harm its reputation (tarnishment). Famous marks must be famous before the challenged mark’s use or registration to obtain dilution protection.

Blurring dilution is evaluated under six non-exclusive factors listed in § 1125(c)(2)(B), including the degree of similarity between the marks, the degree of inherent or acquired distinctiveness of the famous mark, the extent to which the famous mark owner is engaging in substantially exclusive use of the mark, and evidence of actual association between the marks. Tarnishment claims typically arise when the junior mark is used in a context that degrades or tarnishes the reputation of the famous mark—often involving adult content, illegal activity, or low-quality goods.

Geographic Limitations on Opposition

An opposer who has used a mark in commerce but only in a limited geographic area faces a complication in challenging a federal application: common law trademark rights are geographically limited, while federal registration confers nationwide rights. Under the rule in Tuxedo Monopoly, Inc. v. General Mills Fun Group, Inc., 648 F.2d 1335 (C.C.P.A. 1981), a party with common law rights in a specific area has standing to oppose federal registration, but its rights—if established—will only block registration in that geographic area, not nationwide.

For applicants facing opposition from parties with limited geographic use, this doctrine can be a valuable defensive tool: even if the opposer prevails in establishing prior use, the applicant may be entitled to a concurrent use registration covering the rest of the country.

Timing and the Opposition Period

Once a mark is approved for publication in the Official Gazette, any person who believes they would be damaged by registration has 30 days to file an opposition. This 30-day window can be extended upon written request—the first extension to 90 days is granted as of right, and further extensions require a showing of good cause. The opposition must be filed with the TTAB using the Electronic System for Trademark Trials and Appeals (ESTTA) and must include the grounds for opposition and the facts supporting the opposer’s belief of damage.

Both sides of an opposition proceeding benefit from experienced trademark counsel. Whether you are considering opposing another party’s trademark application, or you have received notice that your pending mark has been opposed, contact the trademark attorneys at Revision Legal at 855-473-8474 or fill out the contact form on this page.

Whether you are a business considering filing an opposition or an applicant defending one, acting promptly and strategically is critical. Opposition proceedings have strict procedural rules, and counsel experienced before the TTAB can make the difference between a successful outcome and an unnecessary loss. Contact the trademark attorneys at Revision Legal at 855-473-8474 to discuss your trademark opposition matter.