Trademark Oppositions* in the United States

1. Trademark Oppositions* in the United States S. Lloyd Smith Buchanan Ingersoll & Rooney PC May 2013

2. Getting Started • Venue: USPTO’s Trademark Trial and Appeal Board (“TTAB”) • Time for filing Oppositions • 30 days from date of Publication to file • One extension for up to 90 days for “good cause” • An additional 60 day extension with applicant’s consent • No extension beyond 180 days • Cancellations can be filed at anytime*

3. Opposition: Filing Bases Likelihood of confusion Dilution Genericness/Descriptiveness Disparagement Fraud Deceptive

4. Oppositions: Filing Bases • Likelihood of Confusion • Most common basis • Opposer alleges that applicant’s mark is confusingly similar to a mark in which opposer has prior rights • Priority can be based on prior registration, prior common law usage, or previously filed intent-to-use application • Can oppose entire application, or only certain classes or certain goods and services

5. Oppositions: Filing Bases • Dilution • Opposer owns a famous mark • Applicant’s mark is likely to dilute • Less common – fame is high threshold • Descriptiveness/Genericness • Opposer alleges that Applicant’s mark is descriptive or generic • Opposer must also allege harm

6. Oppositions: Filing Bases • Fraud • More common for cancellation than opposition • Opposer alleges applicant either has not used the mark in commerce, or lacks a bona fide intent to use the mark in commerce • Opposer must establish actual intent to commit fraud, not merely that the applicant “should have known” that its statements were fraudulent

7. Oppositions: Filing Bases • Disparagement • Opposer alleges that Applicant’s mark disparages or brings into disrepute a person or group of people • Opposer must also allege harm • REDSKINS case • Deceptive Marks

8. Oppositions: Filing Bases • Geographically Descriptive • Three elements must be proved: • The primary significance of the mark is a generally known geographic location (e.g. LONDON, NEW ENGLAND, BIG APPLE); • Goods or services originate in the place identified by the marks (e.g.BAIKALSKAYA – the Russian equivalent of “from Baikal” or “Baikal’s” – held primarily geographically descriptive of vodka, when vodka is made from the water of Lake Baikal (In re Joint-Stock Co. “Baik,” 80 USPQ2d 1305 (TTAB 2006)); and • Purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark • Defenses • Geographic term is an obscure or remote place that will not be recognized as a geographic term by consumers • Primary significance of the term is not geographic

9. Oppositions: Filing Bases • Geographically Deceptively Misdescriptive • Four elements must be proved • The primary significance of the mark is a generally known geographic location; • Goods or services do not originate in the place identified by the marks; • Purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark; and • The misrepresentation is a material factor in a consumer’s decision to buy the goods or use the services • Evidence that the geographic term refers to a famous place raises an inference of materiality • Is the geographic place known for those particular goods/services? • HAVANA COLLECTION for cigar accessories - YES • PARIS BAGUETTE & Design for bread - YES • LONDON SOHO NEW YORK for cosmetic bags – NO

10. Initial Timeline Notice of Opposition Filed 8/22/2012 Time to Answer 10/1/2012 Deadline for Discovery Conference 10/31/2012 Discovery Opens 10/31/2012 Initial Disclosures Due 11/30/2012 Expert Disclosures Due 3/30/2013 Discovery Closes 4/29/2013

11. Post Discovery – Testimony Period Timeline Plaintiff's 30-day Trial Period Ends 7/28/2013 Defendant's 30-day Trial Period Ends 9/26/2013 Plaintiff's 15-day Rebuttal Period Ends 11/10/2013 Plaintiff’s Hearing Brief Due 1/13/2014 Defendant’s Hearing Brief Due 2/12/2014 Plaintiff’s Hearing Brief Due 2/27/2014

12. Initial Pleadings and Discovery Conference • Notice of Opposition • Filed with TTAB • Answer • Applicant given no less than 30 days to Answer • Deadline can be extended with consent of Opposer(e.g. settlement discussions) • Default judgment to Opposer if no Answer is filed • Discovery and Settlement Conference • Parties must meet and confer regarding discovery and possibilities for settlement

13. Discovery • Discovery • Discovery period lasts approximately 8 months • Substantive Discovery goal: • find documents and information supporting a party’s case • Discovery Tools: • Requests for production of documents • Interrogatories • Requests for Admission • Depositions

14. Discovery cont. • Discovery Scope • Broad: all information likely to lead to discovery of admissable evidence • Limited by TBMP – see § 414 • Limited by application/registration goods or services • No discovery of attorney/client privileged information • Additional Discovery • Parties may subpeona documents or depositions from third-party witnesses • Motions to compel uncooperative opponent • Liberal extensions

15. Discovery cont. • Strategic Goals • Convey resolve – in it for the long haul • Cause pain - $ or time • Educate client or opponent as to strength/weakness of case • Strategic Decision – Motion for Summary Judgment

16. Testimony Period • Testimony • Testimony period begins after discovery closes • Opposer and Applicant each have 30-day testimony period, followed by 15-day rebuttal testimony period for Opposer • Parties introduce evidence and testimony from their own witnesses • Usually introduced through testimony depositions • Opportunity for cross examination • No actual live “trial” in opposition proceedings

17. Trial • Briefing • After the testimony period is complete, each party submits written arguments in support of its position • Oral Argument • Optional – granted if one or both parties request it • Panel of three TTAB judges at USPTO in Alexandria, VA • Decision • TTAB will issue written opinion within 6-12 months after completion of briefing

18. ACR Procedure • Accelerated Case Resolution (ACR) is an alternative to traditional inter partesprocedure • Parties elect to modify Board procedure to fit their clients’ goals • May include shortened time limits, limitations on discovery and stipulations of facts • Must be agreed to by both parties and the Board • Main advantages are time and cost-efficiencies • Not widely adopted – requires a lot of cooperation between the parties and not suitable for complex cases

19. Decisions • If TTAB rules in favor of opposer, application will be refused registration • Does not affect applicant’s right to continue to use the mark in the application • If TTAB rules in favor of applicant, application will be allowed to register • Either party may appeal an adverse decision

20. Appeals • Request for Reconsideration • Requests that the TTAB reconsider its decision; rarely results in reversal • Must be filed within thirty days of decisions • Appeal to Federal Circuit Court of Appeals • Appellate court in Washington, DC – specializes in intellectual property cases • Must be filed within two months of decision • Federal Circuit will examine record of opposition proceeding • Filing a new civil action in any US District Court • Court will mostly disregard record of opposition proceeding; parties must re-introduce evidence

21. Settlements • Over 90% of oppositions are settled before a final decision from the TTAB • Possible settlement terms • Narrow goods/services in application • Limit use of mark to connection with a house mark • Limit certain channels of trade • Use of disclaimer

22. TTAB v. District Court • Differences from litigation in federal courts • Only affects the right to register a mark, not the right to use the mark • No damages or attorneys’ fees • TTAB only considers how the mark is displayed in the application, and the goods and services in the application • Less expense • Rare sanctions • Jurisdiction is certain • TTAB judges are experienced with Trademarks

23. District Court Advantages • Complete Relief • Injunction against use, damages, sanctions • Faster Relief (maybe) • More Pressure • Live Testimony • Jury Option • Inconvenient venue for opponent • Stay TTAB proceeding

24. THANK YOU