Westchester Women's Bar Association

Claims That Can Be Asserted in Opposition and Cancellation Proceedings

If a party is seeking to oppose a pending trademark application or seeking to cancel a trademark registration that is less than five years old, it can challenge the trademark based on any ground that could have prevented registration initially. However, if the party is filing a Cancellation Petition and the subject trademark registration is more than five years old, the Petitioner will be restricted to one of the specific grounds listed in Section 14 of the Lanham Act. See our blog post entitled, Challenging Trademark Rights After Five Years Of Registration for the specific grounds available after five years of registration (within five years includes the registration anniversary date). This rule that limits the grounds for challenging marks over five years old, only applies to marks registered on the Principal Register.

This page will discuss the claims that can be made in a Notice of Opposition or in a Petition to Cancel, if the trademark registration is not more than five years old. One of the most common grounds asserted in Opposition and Cancellation Proceedings is likelihood of confusion. In order to assert this ground the plaintiff must have a proprietary right in the mark. This means that the mark is registered on the Principal Register (if so it is presumed to be valid) and if it is not, then it must be shown that the mark has acquired distinctiveness or secondary meaning. It also has to be proven that the Opposer or Petitioner has priority over the Defendant. Lastly, there must be a showing of likelihood of confusion.

Another ground that can be asserted is functionality. The doctrine of functionality serves the purpose to preserve competition by not allowing trademark law to protect product configurations and design features that are functional or utilitarian. A product feature will be considered primarily functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the goods. This doctrine limits registration of trade dress. Another ground that can be asserted to oppose or cancel a trademark is if the mark consists of immoral or scandalous matter. The reasoning behind this restriction is that the U.S. government does not want to be viewed as stamping its approval on marks that may be offensive or immoral.

A claim that a mark is deceptive may also be raised in an Opposition or Cancellation. Marks may be deceptive as to a geographic matter or non-geographic matter. The test is whether the term is misdescriptive of a character, quality, or function, if prospective consumers believe that the misdescription describes the goods, and if the misdescription will likely affect the decision to purchase the goods or services. Another claim that can be asserted in TTAB matters is that a mark makes a false suggestion of a connection or disparages.

A claim may also be asserted if the mark consists of a flag or coat of arms or other insignia of the U.S., or of any state or municipality or of any foreign nation. In addition, a mark cannot consist of a name, portrait or signature identifying a particular living individual without written consent or if the mark contains the name, portrait, or signature of a deceased president during the life of the widow then the widow's written consent is required. An Opposer or Petitioner may also assert a claim based on the mark being merely descriptive of the goods or services in which it is used. This would include a mark that is primarily geographically descriptive, geographically deceptively misdescriptive, or simply geographically deceptive. Moreover, a claim can be brought if the trademark is generic or if it was fraudulently obtained.

Additional grounds that may be asserted in an Opposition or Cancellation proceeding are (1) if the mark is merely a surname; (2) the application was not filed by the owner of the mark; (3) the mark was not yet in use in commerce at the time the application was filed; (4) failure to disclaim unregistrable matter; (5) lack of bona fide intent to use; (6) abandonment which can be based on material alteration of a mark, naked licensing, failure to police the mark, naked assignment or invalid assignment of an intent to use application; (7) dilution or (8) misrepresentation of source. There are numerous claims that may be asserted to challenge a trademark application or trademark registration. If you have questions as to whether there are grounds to challenge a trademark, please contact our office for a courtesy consultation.

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