Grounds for Trademark Opposition and Cancellation

Trademark opposition and cancellation proceedings are administrative proceedings that are similar to a lawsuit in federal court. The first question in any opposition or cancellation proceeding is whether the opposer or petitioner has standing. We reviewed the standards for standing here.

Now we will address the substantive merits of trademark opposition and cancellation proceedings.

Grounds for Opposition

The Lanham Act does not expressly provide for the proper grounds for an opposition,[1] but through judicial interpretation it has been held that once standing is established, an oppose may raise any legal defect or deficient in the application as a grounds for opposition. Usually, this means the opposer will base the opposition on one of the statutory grounds to refuse registration of a trademark in Section 2 of the Lanham Act. As a result, the majority of opposition proceedings are based on the following: descriptiveness, geographical descriptiveness, likelihood of confusion, or no bona fide use in commerce. The Trademark Board Manual of Practice provides a non-exhaustive list of 23 grounds for opposition. See TBMP § 309.03(c).

Grounds for Cancellation

The grounds to cancel a trademark differ depending on whether the complained of mark is less than five years old. If so, the mark may be cancelled for the same reasons the stated in the opposition section above or for specific grounds that may cancel a mark “at any time,” including a claim the mark has become generic, functional, or abandoned.

If the mark has been registered for more than five years, the standard is different. Specifically, claims that the mark is descriptive or creates a likelihood of confusion are no longer possible. Instead, the cancellation must only be based on a claim the registered mark is generic, has been abandoned, was obtained through fraud, or creates a false suggestion of connection, among other rarely used grounds.

Defending Opposition and Cancellation Proceedings

Trademark opposition and cancellation proceedings typically involve extremely complex legal questions and a complete review of all relevant facts. The litigation process is constrained by the rules of procedure, which experienced attorneys can sometimes use to their advantage. To speak with Revision Legal’s trademark attorneys about your opposition or cancellation proceeding, contact us today though the forms on this page or by calling 855-473-8474.

[1] § 20:13 McCarthy on Trademarks and Unfair Competition

Likelihood of Confusion: The Most Litigated Ground

Likelihood of confusion under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), is the most frequently asserted ground in both opposition and cancellation proceedings. The test asks whether, in light of the circumstances surrounding the use of the marks, there is a likelihood of confusion, mistake, or deception in the minds of ordinary consumers in the marketplace. The TTAB applies the multi-factor test from In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973), which identifies thirteen relevant factors.

The two most heavily weighted du Pont factors are (1) the similarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression, and (2) the relatedness of the goods or services. Two marks need not be identical to create a likelihood of confusion; similarity in any one of the appearance, sound, or meaning dimensions may be sufficient if the goods or services are closely related. Conversely, marks that are phonetically or visually similar may coexist if the goods or services travel in completely separate, non-overlapping channels of trade.

Mere Descriptiveness and Acquired Distinctiveness

Section 2(e)(1) of the Lanham Act bars registration of marks that are “merely descriptive” of the goods or services. A mark is merely descriptive if it directly conveys information about an ingredient, quality, characteristic, function, feature, purpose, or use of the goods or services. In re Bayer Aktiengesellschaft, 488 F.3d 960 (Fed. Cir. 2007). This ground is frequently raised in oppositions when an applicant is attempting to register a term that competitors need to use to describe their own products.

A party defending against a mere descriptiveness ground may argue that the mark has acquired distinctiveness—also called secondary meaning—under Section 2(f) of the Lanham Act. To establish secondary meaning, the applicant must show that the consuming public primarily associates the mark with the applicant’s source rather than with the descriptive meaning of the term. Evidence of long and exclusive use, substantial advertising expenditures, consumer surveys, and declarations of industry recognition all bear on this question.

Fraud on the USPTO

Fraud is a powerful but demanding ground for both opposition and cancellation. To prevail on a fraud claim, the petitioner must prove by clear and convincing evidence that the registrant (or applicant) made a false, material representation to the USPTO with the intent to deceive the Office. In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009). Mere negligence or even recklessness is insufficient; deliberate misrepresentation is required.

Fraud claims most commonly arise when a registrant files a Section 8 or Section 15 affidavit of continued use listing goods or services on which the mark is no longer actually in use. Petitioners who discover that a registrant has maintained a registration through false use declarations should evaluate whether a fraud-based cancellation proceeding is warranted. If successful, the entire registration is void ab initio—not merely cancelled prospectively.

Dilution as an Opposition Ground

Owners of famous marks have an additional weapon: a dilution claim under Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c). Dilution by blurring occurs when the applied-for mark is likely to impair the distinctiveness of the famous mark; dilution by tarnishment occurs when the applied-for mark is likely to harm the reputation of the famous mark. Fame for dilution purposes is a high bar—the mark must be widely recognized by the general consuming public, not merely within a niche market.

Dilution claims in opposition proceedings do not require proof of likelihood of confusion. The famous mark owner must simply show that the applied-for mark is likely to dilute the distinctive quality of its famous mark. This makes dilution a useful alternative or supplemental ground when the goods or services are so unrelated that a Section 2(d) likelihood-of-confusion claim would be weak.

No Bona Fide Intent to Use

For intent-to-use applications filed under Section 1(b) of the Lanham Act, an opposer may challenge the application on the ground that the applicant lacked a bona fide intent to use the mark in commerce at the time of filing. 15 U.S.C. § 1051(b). Unlike the use-in-commerce requirement, this ground focuses on subjective intent at the filing date. Evidence relevant to the lack-of-bona-fide-intent ground includes the applicant’s failure to develop any business plan for the mark, the absence of any prototype or product development, and the filing of a large number of intent-to-use applications in a short period without any corresponding commercial activity. See Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 U.S.P.Q.2d 1503 (T.T.A.B. 1993).

Understanding which grounds apply to your specific facts is essential to building an effective opposition or cancellation strategy. Revision Legal’s trademark attorneys have handled contested TTAB proceedings across a wide range of industries. Contact us at 855-473-8474 or through the contact form on this page to discuss your matter.

Counterclaims in Opposition and Cancellation Proceedings

One procedural feature of TTAB proceedings that parties sometimes overlook is the ability to assert counterclaims. In an opposition proceeding, the applicant may file a counterclaim to cancel the opposer’s registration, provided the applicant has standing and valid grounds. In a cancellation proceeding, the registrant may similarly counterclaim for cancellation of any registration owned by the petitioner. Counterclaims must be pleaded in the Answer and must independently satisfy both the standing and substantive grounds requirements. TBMP § 313.01.

The strategic value of a counterclaim depends heavily on the specific facts. A well-founded counterclaim can shift leverage significantly—transforming a defensive posture into a proactive one that threatens the opposing party’s own registration. It can also create pressure to settle on terms more favorable to the counterclaiming party. However, a weak counterclaim adds cost and complexity without commensurate benefit. The decision whether to assert a counterclaim should be made in consultation with experienced trademark counsel who can assess the viability of the available grounds against the opposing party’s registration.