Grounds of Opposition against U.S. Trademark Application

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:

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:

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.