Before qualifying to bring an Opposition or a Cancellation proceeding before the Trademark Trial and Appeal Board (the "Board"), the party initiating the action must have standing. This means the party in the position of plaintiff must have a personal stake in the outcome of the Opposition or Cancellation proceeding. The statutory authority for standing for an Opposition or Cancellation can be found in Sections 13 and 14 of the Lanham Act, respectively. There must be a personal interest in the proceeding and a reasonable basis to believe the party in the position of plaintiff will be damaged. See our blog entitled, Sales Figures And Advertising Dollars Alone Do Not Prove Acquired Distinctiveness, for an example of how standing can be established.
If the party initiating the action asserts likelihood of confusion as a ground to oppose or cancel the mark, there is no requirement that actual damages be pleaded and proved to satisfy the standing requirement. It is sufficient if Opposer's belief in likelihood of confusion is not entirely without merit. The statute is liberally construed; especially if the Opposer alleges abandonment of the mark for non-use. It has been held that bringing proceedings based on non-use serves the public interest by removing dead marks from the United States and Patent Office ("USPTO") Register and improves the reliability of trademark searching.
If the ground asserted in a Board proceeding is either that the mark is merely descriptive or generic of the applicant's goods or services, then it is sufficient for Opposer to show that either it is a competitor of the Applicant or that the Opposer may use the term to describe his goods or services which are similar to those of the Applicant's. The Opposer is not required to have a proprietary right or an ownership interest in the mark to have standing in an Opposition under Section 2(a) false suggestion of a connection or under 2(d) likelihood of confusion, as long as the Opposer has a real interest in the outcome of the proceeding. This real interest may include attempting to prevent public deception or preventing harm to a particular trade association and its members. Under different circumstances, if the party asserts fraud or abandonment as the ground to oppose or cancel a mark, it is enough if the Opposer or Petitioner is in a position to use the subject mark in its own right for similar goods or services to that of the Applicant or Registrant.
Based on the Federal Rules of Civil Procedure, 8(e)(2), an Opposer has the option to set forth alternate legal theories to prevent the mark from registering. A party can state as many separate claims or defenses as he has regardless of consistency. See Taffy's of Cleveland, Inc. v. Taffy's, Inc. 189 USPQ 154, (TTAB 1975). For example, if the Examining Attorney refuses an application based on likelihood of confusion with a prior registered mark, the Applicant is permitted to attempt to overcome the refusal by arguing that confusion is not likely. If the Applicant fails to persuade the Examiner of his position, he may then bring a Cancellation proceeding (assuming he has prior use of the mark) and assert the ground of likelihood of confusion, even though the two positions are inconsistent.
The rationale for allowing inconsistent pleadings is that any representation made by an applicant in an ex parte proceeding in an effort to overcome an objection, cannot preclude the party from taking a different position in a matter before the Board. Although, keep in mind under the right circumstances, it may be warranted to find an applicant's statement in an ex parte proceeding to be an admission against interest in a later proceeding.
Once standing is demonstrated, any ground for opposition is permitted if it will nullify the Applicant's right to register the mark. Opposer maintains the burden of proving its case by a preponderance of the evidence unless the application involves a claim of acquired distinctiveness. In this case, the Applicant admits that the mark is descriptive and thus cannot register unless secondary meaning can be demonstrated. If you have questions regarding the standing requirement, please feel free to contact our office for a courtesy consultation.