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Who has Standing to Oppose or Cancel My Trademark?

By Eric Misterovich

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.

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