Can I Oppose a Trademark Application?
The first question a potential opposer to a United States Patent and Trademark Office (USPTO) trademark application should always ask is: Can I oppose this trademark application? The TTAB translates this question into whether or not you have standing. Standing generally requires that a person, or entity, be damaged by the registration of a trademark on the principal register. Put another way, the opposer must have a real interest in the outcome of the proceeding and not simply be a mere intermeddler.
Whether or not an opposer has the requisite standing depends upon the grounds for the opposition. A trademark opposition may be filed based upon several grounds, including:
1. Likelihood of confusion – in order to have standing, you must prove priority, meaning that you were the first to use the trademark, or one confusingly similar thereto, in commerce
2. Mere descriptiveness – in order to have standing, you must prove, for example, are a competitor and that you need to be able to use the term to describe the goods/services
3. Disparaging or scandalous – in order to have standing, you must prove you are a member of the group that is being disparaged or affected by the scandalous nature of the mark
4. Abandonment – in order to have standing, you must prove you are in a position to use the mark
5. Fraud – in order to prove standing, you must prove that the fraud, such as lacking a bona fide intent to use the mark despite filing to the contrary, and you have such a bona fide intent to use the mark
6. Dilution – in order to prove standing, you must prove your mark was famous prior to the applicant’s first use
Ultimately, if you allege several grounds for the opposition, you must only prove standing for one. Regardless, you should be ready to allege and prove standing within the trademark opposition period.
Just because you successfully prove standing does not mean you will necessarily prevail. You must still allege and prove the elements required under each of the above-identified grounds for opposition. When in doubt, you would be well-served to review prior TTAB trademark decisions as they relate to both standing and the particular grounds for your trademark opposition.
Ultimately, successfully pleading standing in your Notice of Opposition will allow the TTAB to get to the merits of your case, and hopefully to a successful outcome.
