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
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