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Standing in Opposition to a Trademark Registration

By John DiGiacomo

The United States Patent and Trademark Office’s Trademark Trial and Appeal Board (the Board) recently denied a trademark applicant’s Motion for Summary Judgment seeking to throw out an opposer based on lack of standing. This case serves as a great reminder of how low the bar is for standing to oppose trademark registration.

In this case, the Applicant, a genealogy information provider, seeks to register the mark ProGenealogists. A “professional genealogist” and teacher of genealogy opposes that registration claiming a common law right to use the terms “pro genealogists” and that she has in fact used those words to describe her work for years, certainly longer than the Applicant has. The Applicant filed a Motion for Summary Judgment arguing that the Opposer’s case should be thrown out due to her lack of standing. On February 18, 2015, the Board denied that Motion.

An opposer in a trademark registration action argues against the registration of the applicant’s desired mark because such a registration would damage it in some way. It can only do so if it can show it was damaged, which gives it standing to oppose. The Board’s decision pointed to the “liberal” standing requirements it requires: as long as an opposer can show alleged damage with a “reasonable basis in fact” and that it “reflects a real interest in the case,” it can be granted standing to oppose. This mirrors the generally lenient standing requirements in federal courts.[1]

In this case, the Opposer seeks to challenge the Applicant’s mark as descriptively generic, i.e., it cannot be registered as a trademark because it only serves as a generic description[2] of the type of business Applicant (and Opposer) is involved in. In its Opinion, the Board added to its definition of its standing requirement by ruling that in cases based on opposition due to generic marks, the opposer “may establish its standing by pleading and proving that it is engaged in the sale of the same or closely related products or services (or that the product or service in question is within the normal expansion of the plaintiff’s business), and that the plaintiff has a competitive need or equal right to use the term in a descriptive manner, that is, that plaintiff is in a position to use the term descriptively.”

The Board ultimately decided that the Opposer had standing. She had submitted evidence that she worked as a “professional genealogist” for many years and taught genealogy to future genealogists. She also submitted evidence that she advertised her school by using the phrase “Where Genealogists Become Professionals,” “Professional Genealogy,” and “Professional Genealogical

Research Courses.” The Board ruled that she had a direct personal stake in the registering of the Applicant’s mark and denied Applicant’s Motion for Summary Judgment.

This case will move forward and the Board will have to decide whether or not the Applicant’s proposed mark is actually generic. But by denying the Applicant’s Motion for Summary Judgment, the Board once again showed how low its standing threshold for opposition actually is.

[1] See e.g., Lujan v. Defenders of Wildlife, 504 U.S. 555 (1992).

[2] A good example of a generic description is “Light Beer.” It describes the product, and any beer producer would not be able to trademark those words because (a) they just describe the product and (2) it would be inequitable to restrict use of those words by other beer distributors who also make light beer.

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