Standing in Opposition to a Trademark Registration

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.

The Opposition Process: From Publication to Trial

When the USPTO approves a trademark application for publication, the mark is published in the Official Gazette for a 30-day opposition period. Any person who believes they would be damaged by the registration may file a Notice of Opposition with the Trademark Trial and Appeal Board (TTAB) within that 30-day window, or request a 30-day extension of time to oppose. Extensions are liberally granted on showing of good cause, and parties regularly secure 90-day or longer extension periods to evaluate their opposition claims before committing to formal proceedings.

Once filed, an opposition proceeds like a civil lawsuit before the TTAB — without live witnesses but with full discovery rights including document requests, interrogatories, and depositions. The parties exchange evidence during trial periods designated for testimony by affidavit or declaration. The TTAB then issues a written decision sustaining or dismissing the opposition. A sustained opposition prevents registration of the mark; a dismissed opposition allows the application to proceed to registration. Either outcome can be appealed to the Federal Circuit or to a federal district court for a de novo trial on the merits.

Grounds for Opposition: What You Must Prove

Standing — the low threshold discussed above — is just the entry ticket. To actually succeed in an opposition, the opposer must prove substantive grounds for refusing registration. The most common grounds include:

• Likelihood of confusion: The applied-for mark, if registered, would cause consumer confusion with an existing registered mark or a mark in which the opposer has common law rights. This is the most frequently litigated ground, evaluated under the multi-factor DuPont test established in In re E.I. DuPont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973).
• Descriptiveness: The mark is merely descriptive of the goods or services and has not acquired secondary meaning, making it ineligible for registration on the Principal Register.
• Genericness: The mark is the common name for the goods or services and cannot function as a trademark at all.
• Fraud on the USPTO: The applicant made material misrepresentations in the application, such as falsely claiming dates of first use or falsely asserting ownership of the mark.
• Priority and prior use: The opposer used the mark in commerce before the applicant’s date of first use and has priority rights that preclude registration.

Concurrent Use and Consent Agreements as Alternatives to Opposition

Not every trademark conflict requires an opposition proceeding. When two parties have legitimate, non-overlapping uses of similar marks in different geographic markets or different product categories, a concurrent use agreement or a consent agreement may permit both parties to proceed. In a consent agreement, the parties agree on geographic limits, product category restrictions, required disclaimers, and quality standards, and jointly submit the agreement to the USPTO as evidence that registration of the applied-for mark will not cause consumer confusion. The TTAB gives significant weight to consent agreements, though it retains discretion to reject them where the marks are essentially identical and cover highly similar goods or services.

Contact Revision Legal’s Trademark Attorneys

Trademark opposition proceedings are complex, time-sensitive, and procedurally demanding. Missing the opposition window — even by a day — can mean losing the right to challenge a competitor’s registration forever. Revision Legal’s trademark attorneys monitor client marks for conflicting applications, evaluate opposition claims, and represent parties in TTAB proceedings from Notice of Opposition through final decision and appeal. Contact us today if you have identified a potentially conflicting trademark application.