Defenses in a Trademark Opposition Proceeding

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.

Challenging the Opposer’s Standing

Before engaging with substantive defenses, applicants should evaluate whether the opposer has standing to bring the proceeding at all. Under the Lanham Act, 15 U.S.C. § 1063, any person who believes they would be damaged by the registration of a mark may file an opposition. However, “belief of damage” requires more than a vague concern—the opposer must have a real commercial interest in the outcome. In Empresa Cubana del Tabaco v. General Cigar Co., 753 F.3d 1270 (Fed. Cir. 2014), the Federal Circuit confirmed that standing is a threshold requirement; if the opposer cannot establish it, the proceeding should be dismissed without reaching the merits.

Common standing challenges arise where the opposer’s mark is itself unregistered, where the opposer operates in a different industry with no realistic likelihood of competitive overlap, or where the opposer’s own use has been so minimal that it would not establish trademark rights in a standalone infringement action.

Acquired Distinctiveness as a Defense to Descriptiveness Challenges

When an opposer challenges a mark on absolute grounds as merely descriptive under Lanham Act § 2(e)(1), the applicant can assert that the mark has acquired secondary meaning—also called acquired distinctiveness. Under § 2(f), a mark that has become distinctive of the applicant’s goods or services in commerce is registrable notwithstanding its descriptive character. Evidence of acquired distinctiveness includes:

• Long and substantially exclusive use of the mark in commerce (courts often look for five or more years of continuous use)
• Significant advertising expenditures and sales volume
• Consumer survey evidence showing that the relevant public associates the mark with a single source
• Unsolicited media coverage and third-party recognition of the mark

Abandonment and Non-Use Defenses

Even when an opposer has priority of use, the applicant may defend by showing that the opposer has abandoned its mark. Under Lanham Act § 45, a mark is deemed abandoned when its use has been discontinued with intent not to resume use. Three consecutive years of non-use creates a rebuttable presumption of abandonment. If the opposer’s mark has not been used in commerce for three or more years, the applicant can assert abandonment as an affirmative defense, effectively defeating the priority claim at the heart of most relative-grounds oppositions.

Abandonment through naked licensing—licensing a mark without adequate quality control—is another defense worth exploring. Courts have found marks abandoned where owners licensed them so broadly, and with so little oversight, that the marks ceased to function as source identifiers. FreecycleSunnyvale v. Freecycle Network, 626 F.3d 509 (9th Cir. 2010), illustrates how aggressive licensing without control mechanisms can destroy trademark rights entirely.

The Doctrine of Foreign Equivalents

In opposition proceedings involving marks with foreign-language components, the doctrine of foreign equivalents may be relevant to both likelihood-of-confusion and descriptiveness analyses. Under this doctrine, words in common foreign languages are translated into English to determine whether they are descriptive or confusingly similar to existing English marks. However, the doctrine is not absolute—it applies only when it is likely that the ordinary American purchaser would stop and translate the foreign term. Applicants defending against confusion claims involving foreign-language marks should consider whether this doctrine strengthens or weakens their position.

Work With a Trademark Litigation Attorney

Selecting the right defense strategy in a trademark opposition requires a careful analysis of the specific grounds asserted by the opposer, the strength of your evidence, and the commercial stakes involved. Errors in defense strategy—particularly failing to raise defenses that must be pleaded affirmatively—can waive them entirely. The trademark opposition attorneys at Revision Legal have experience defending applicants before the TTAB across all categories of opposition proceedings. Contact us at 855-473-8474 or complete the form on this page.

Applicants who prevail in a TTAB opposition proceeding—either by defeating the opposition outright or by negotiating a favorable settlement—should also consider whether any aspect of the proceeding creates precedent that strengthens or weakens their trademark’s position going forward. A TTAB decision finding that the applicant’s mark is not likely to be confused with the opposer’s mark, for example, can be persuasive evidence in future disputes with other parties asserting similar confusion-based claims. Conversely, admissions made during the proceeding about the mark’s scope of use or distinctiveness can be used against the applicant in subsequent proceedings. Careful management of admissions and stipulations during the TTAB proceeding is an important part of long-term trademark portfolio strategy. Contact Revision Legal at 855-473-8474 to discuss your opposition defense.