Major corporations employ vigorous defense by devoting millions of dollars to trademark policing. As a primarily results-driven group, these corporations flex their monetary muscle via bullying tactics in hopes that the economically unsustainable small business owners simply roll over into submission. While there are varying degrees and plethora of ways to impose their aggressive vigilance, some big corporations are known to challenge marks, even if they may not be similar their own marks via opposition proceedings.
The current state of trademark bullying can lead to inefficiencies in opposition proceedings. According to American Intellectual Property Association Report of Economic Survey, the median cost to a party in a Trademark Trial and Appeals Board (“TTAB”) proceeding is $80,000. While opposition proceedings can be economical compared to the much more expensive federal trademark litigation in the District Court, most small-business owners are unable to sustain opposition proceeding costs. As such, even if the big corporations may not have a strong case, affordability often forces small business owners to abandon their mark in the graveyard of intellectual property rights, when encountered with the threat of TTAB proceedings.
What is a Trademark Opposition?
In the United States, trademark oppositions are filed with and heard by the TTAB. A Trademark Opposition is an objection by any third party to a pending federal application after it has been published and before federal registration is granted. Typically, the opposing party believes that it will be damaged if the resulting registration is granted by the United States Patent and Trademark Office. When it comes to opposition proceedings, the Lanham Act provides that:
“[a]ny person who believes that he would be damaged by the registration of a mark upon the principal register, including as a result of dilution under section 43(c) [15 U.S.C.1125(c)], may, upon payment of the prescribed fee, file an opposition in the Patent and Trademark Office.”
Essentially, this means that a party believed to be damaged by a trademark application being registered, can oppose that mark under the current system by filing an opposition with the TTAB and commence a full opposition proceeding therein.
Who Can File a Notice of Opposition?
Any party that can show it has a "real interest in the case” can file a notice of opposition. The party can be an individual, firm, corporation, union, association or other organization capable of suing and being sued in a court of law.
Do Statistics Favor Large Corporations?
Sampling of TTAB opposition cases indicates that at least 70% of oppositions involving small trademark business owners were sustained compared to only 50% of oppositions sustained when both Applicant and Opposer of the mark were large entities. While these statistics are inconclusive given the nature of the sample size, it may be indicative on how the influence of power and money of large corporations impacts opposition proceedings with the TTAB, nonetheless.
How do Large Corporations Police their marks?
Typically, large corporations have bountiful of legal resources. The legal teams of big corporations are hired to zealously monitor every trademark application published in the Trademark Official Gazette. As such, during the 30-day opposition period, the legal teams minutely scan through each and every application and aggressively go after any mark that may contain even a slight resemblance to an existing mark they own.
Additionally, some aggressive corporations also employ large firms to monitor daily searches through the United States Patent and Trademark Office TESS database, allowing them to scan every new application filed with the Office.
Should small business owners defend opposition proceedings?
While cost of legal fees is often an issue for small business owners, consulting with a qualified intellectual property attorney can allow small business owners to determine the true merits of their case. By understanding the strength of the case, the qualified intellectual property attorney can help small business owners understand the costs and benefits of varying courses of actions, and their chances of successfully defending the opposition.
At Loigica, no matter the size of the opposing party, we help our clients assess the merits of their case and advise on proper course of action after thorough analysis has been made. We have experienced attorneys who know how to defend opposition cases.
While we are not in position to make any express comments on our on-going cases, check out the current trademark opposition case we are defending against ToysRUs and its related commentary featured on NPR/WLRN. The featured story can be found at:
http://wlrn.org/post/toys-r-us-alleges-miami-company-infringes-its-trademark
