Who has Standing to Oppose or Cancel My Trademark?

Trademark Law

The first question in any trademark opposition or cancellation proceeding is likely a question of whether the opposer (for opposition proceedings) or petitioner (for cancellation proceedings) has standing to pursue the action. The rules for establishing standing, meaning a sufficient interest in the mark to litigate, are relatively easy to establish and are generally considered a rather low burden.

To establish standing to oppose the registration of a mark or to cancel a mark, a party must plead that it has a “real interest” in the outcome of the proceeding. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ, 1023, 1025-26 (Fed. Cir. 1999). To plead a ‘real interest’ in the case, opposer must allege a ‘direct and personal stake’ in the outcome of the proceeding, and the allegations in support of its belief of damage must have a reasonable basis in fact.” Petroleos Mexicanos v. Intermix S.A., 97 U.S.P.Q.2d 1403 (T.T.A.B. 2010) (quoting Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1027 (Fed. Cir. 1999)).

The purpose of standing is to prevent litigation where there is no real controversy between the parties, where a plaintiff, petitioner or opposer, is no more than an intermeddler. Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPWQ 185, 187 (CCPA 1982). This is a low threshold. Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, 90 U.S.P.Q.2d 1112, n.8, 2009 WL 691309 (T.T.A.B. 2009). The issue is not whether the opposer owns the mark or is entitled to register it, but merely whether it is likely that he would be somehow damaged if a registration were granted to the applicant.” Wilson v. Delaunay, 245 F.2d 877, 114 U.S.P.Q. 339 (C.C.P.A. 1957). “All that is necessary…is that the ‘person’ bringing the opposition establish conditions and circumstances from which damages to it from the opposed mark can be assumed.” FBI v. Societe: “M. Bril & Co.,” 172 U.S.P.Q. 310 (T.T.A.B. 1971); 3 McCarthy on Trademarks and Unfair Competition § 20:7 (4th ed.).

While the Lanham Act provides a relatively low standard for standing, it remains the first question that must be addressed in trademark opposition and cancellation proceedings.

For more information, contact Revision Legal’s trademark attorneys through the forms on this page or call 855-473-8474.

Extra, Extra!
Recent Posts

Does the AI-Copyright Legal Fight Represent a National Security Threat?

Does the AI-Copyright Legal Fight Represent a National Security Threat?

Copyright

The holders of copyrights for newspapers, magazines, books, and other publications are involved in numerous legal battles with owners of AI modules over alleged copyright infringement. The plaintiff copyright owners claim that the AI large language modules have been trained on huge quantities of copyrighted materials without permission and — most importantly — without payment. […]

Read more about Does the AI-Copyright Legal Fight Represent a National Security Threat?

How Does Buy-Sell Insurance Work For An Owners’ Agreement?

How Does Buy-Sell Insurance Work For An Owners’ Agreement?

Corporate

The owners of most small, closely-held businesses negotiate and sign some form of an “Owner’s Agreement.” An important part of such Agreements is the “Buy-Sell” provisions. These are often some of the most difficult to negotiate. The gist of the buy-sell part of the Owners’ Agreement is to establish the rules for what happens if […]

Read more about How Does Buy-Sell Insurance Work For An Owners’ Agreement?

Status on Social Media Moderation Statutes and Cases

Status on Social Media Moderation Statutes and Cases

Internet Law

Social media content moderation by technology platforms was one of the “hot” legal topics in 2023-2024. Three States — California, Texas, and Florida — passed different statutes to either require more content moderation (California) or to limit such moderation (Texas and Florida). All the statutes, in one way or another, demanded more transparency and information […]

Read more about Status on Social Media Moderation Statutes and Cases

Put Revision Legal on your side