Trademark Attorney For TTAB Proceedings

Representing the Underdog

Most of our clients are small businesses trying to protect their trademarks, often from someone bigger who is claiming that the smaller businesses trademark is likely to be confused with the mark of the bigger company. When big companies try to enforce their trademark rights beyond what is reasonable and legal, it can be called trying to enforce a “right in gross”  or can be called “trademark bullying.” Many trademark oppositions or cancellations are preceded with a cease and desist letter from the potential opposer.

Even if the TTAB (USPTO Trademark Trial and Appeal Board) finds that  an opposer has proven that its marks are famous for purposes of likelihood of confusion, fame alone is not sufficient to establish likelihood of confusion. If that were the case, having a famous mark would entitle an opposer to a right in gross, and that is against the principles of trademark law. See University of Notre Dame du Lac v. J.C. Gourmet Food Imports, Co., Inc., 703 F.2d 1372, 217 USPQ 505, 507 (Fed. Cir. 1983). Fame is just one factor in a likelihood of confusion analysis (the fifth DuPont factor of thirteen). The other du Pont factors must also be considered when they are applicable.

Differences in the goods and services, different commercial impressions by the marks, may also be significant countervailing factors dispelling any likelihood of confusion. See Blue Man Productions Inc. v. Tarmann, 75 USPQ2d 1811, 1819-1820 (TTAB 2005), rev'd on other grounds, Civil Action No. 05-2037 (D.D.C. April 3, 2008). Whether the marks are confusingly similar may depend on the different connotations of the marks.

A smaller business may be able to protect their trademark rights against an opposer or protect their trademark as an opposer but even if the underdog is completely right in theory, it still must be proven following the proper legal procedures for an opposition or cancellation proceeding (if the proceeding is before the USPTO).

The steps to successfully completing or defending from an opposition are difficult and involve understanding not just trademark law but also federal court procedures for admitting evidence, understanding discovery and how it works and other knowledge.  Not Just Patents® Legal Services works with small business to protect trademark rights and works to defend these rights within small budgets. Corporate giants have the budgets to oppose and cancel but do not always have the facts on their side. Let us take a look at the facts and see if your business has to just give in or if your business has a right to defend what you have worked for.

How Often Are Trademarks Opposed?

Oppositions and Cancellations are Uncommonly Instituted But Are Real Threat Once Instituted

As reported in The USPTO Trademark Case Files Dataset: Descriptions, Lessons, and Insights, January 2013

The vast majority of published applications proceed directly to registration without any opposition. An opposition proceeding instituted for only 2.8 percent of 4.0 million published applications with prosecution event-data coverage in a recent USPTO study. For those applications no longer pending, the data indicate that the opposition was sustained [the trademark did not issue]  in about 44.8 percent of observations in which an opposition was instituted.

A cancellation proceeding is instituted for only about 1.1 percent of the 3.4 million registrations with prosecution event-data coverage. For those registrations with proceedings no longer pending, the data indicate that a cancellation was granted in about 44.9 percent of observations in which a cancellation proceeding was instituted.

How to Get Started on Claiming Your Trademark Rights

If you have received a Notice of Opposition or Petition to Cancel you need to act quickly. The USPTO does not recommend that trademark owners represent themselves in proceedings (pro se).

Strict compliance with the Trademark Rules and the Federal Rules of Civil Procedure is expected by all parties whether or not represented by counsel. While Patent and Trademark Rule 10.14 permits any person to represent itself, it is generally advisable for a person who is not acquainted with the technicalities of the procedural and substantive law involved in an opposition proceeding to secure the services of an attorney who is familiar with such matters. See Shutemdown Sports, Inc. v. Lacy (TTAB 2012). Many attorneys that have filed trademark applications have never successfully handled a trademark opposition or cancellation. Like anything else, experience matters.

If you have found a competitor using your trademark or a mark that you believe conflicts with your trademark has been applied for or has been published for opposition, you need to act quickly. Waiting too long can have bad unintended results. Opposing a trademark before it registers is easier than trying to cancel the mark after it registers. A registered mark remains registered with full rights during a cancellation proceeding while the same mark being opposed earlier remains a pending application with fewer rights. Missing the opposition for an intent-to-use application can potentially mean waiting for years for the mark to register so that it can be subject to cancellation.

If you are just starting the process of obtaining a federal registration, we suggest our service, our methods and strategies. A Not Just Patents Five-Step Verification as part of a Plan for A Successful Trademark uses these steps plus more:

To Verify a potential trademark is strong, available to use, and ready to register, the process should be more than a direct hit federal search. To maximize the commercial strength and minimize the weaknesses of a trademark, a potential trademark user should:

1) Verify Inherent Strength,

2) Verify Right to Use,

3) Verify Right to Register,

 4) Verify the potential mark (as currently used) Functions As A Mark, and

5) Verify the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing.

(*We don’t stop here but this is a good start. Call us if you want to plan for a strong mark.)

Call us at 1-651-500-7590. We can help you go from wanting to protect your name to having a strong, legally protectable, successful trademark. If you have started to think of names or slogans that you would like to use, the timing is perfect to take all the right steps to file and protect your trademark. If you intend to use a name in the next year or so, the timing is perfect to plan the best way to protect that name and to reserve the name for future use.

Not Just Patents® LLC

PO Box 18716

Minneapolis, MN 55418  


Not Just Patents®

Aim Higher® Facts Matter

Call 1-651-500-7590 or email for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Evolved Means, Method or Format-Is your trademark registration obsolete?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Cease and Desist

Patent, Trademark & Copyright Inventory Forms

USPTO Search Method for Likelihood of Confusion

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

Decrease Your Vulnerability to Cancellation

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Opposition Pleadings    UDRP Elements    

Oppositions-The Underdog    Misc Changes to TTAB Rules 2017

How To Answer A Trademark Cease and Desist Letter

Trademark Integrity: Are your IP Assets Vulnerable?

Trademark Refusals    Does not Function as a Mark Refusals

Insurance Extension  Advantages of ®

How to Respond to Office Actions  Final Refusal

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $224 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Trademark-Request for Reconsideration

Why Not Just Patents? Functional Trademarks   How to Trademark     

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 TTAB Document Service  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS, TEAS RF and TEAS plus  

Extension of Time to Oppose?

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal

What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks  

Likelihood of Confusion 2d  TMOG Trademark Tuesday

Acquired Distinctiveness  2(f) or 2(f) in part

Merely Descriptive Trademarks  

Merely Descriptive Refusals

ID of Goods and Services see also Headings (list) of International Trademark Classes

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses

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Call: 1-651-500-7590 or email: This site is for informational purposes only and is provided without warranties, express or implied, regarding the information's accuracy, timeliness, or completeness and does not constitute legal advice. No attorney/client relationship exists without a written contract between Not Just Patents LLC and its client. Past performance is no guarantee of future results. Privacy Policy Contact Us