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Grounds of Opposition against U.S. Trademark Application
Oct 2018
In the United States, oppositions are filed with and heard by the Trademark Trial and Appeal Board (“TTAB”) of the United States Patent and Trademark Office (“USPTO”).
The TTAB
The TTAB is an administrative adjudicatory body residing within the USPTO to hear and decide trademark oppositions. The TTAB has exclusive jurisdiction to hear and decide oppositions to federal applications.
Grounds
The following are the most typical grounds argued in U.S. trademark oppositions. They include both relative grounds and absolute grounds of trademark oppositions.
Oppositions Based on Absolute Grounds:
TTAB may refuse registration because the mark:-

  • is descriptive—or geographically descriptive of the goods/services.
  • is generic of the goods/services
  • is deceptive as to the goods/services
  • Other relevant factors.
Oppositions Based on Relative Grounds:
TTAB may refuse registration if it believes that confusion is likely with a prior mark. The factors considered in determining likelihood of confusion include:

  • The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
  • The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
  • The similarity or dissimilarity of established, likely-to-continue trade channels.
  • The fame of the prior mark (e.g. sales, advertising, length of use).
  • The number and nature of similar marks in use on similar goods/services.
  • The nature and extent of any actual confusion.
  • The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
  • Other relevant factors.

Company information

BKIP Limited

Unit 2202, 22/F, Causeway Bay Plaza I, 489 Hennessy Road, Causeway Bay, Hong Kong
(852) 3157 0065
tm@bkip.com.hk