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.
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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.
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