American Intellectual Property Law Association
COST COMPARISON OF INTER PARTES
PROCEEDINGS IN THE USPTO AND
INFRINGEMENT ACTION IN TRADEMARK
DISPUTES
George W. Lewis, Esq.
Firm Logo
Phoenix Midwinter Meeting
IP Practice in Japan Pre-Conference
January 28-29, 2014
AIPLA1
1
Slide Title
COURT PROCEEDINGS
TYPICALLY COST MORE - A
LOT MORE
Firm Logo
AIPLA2
2
RULES OF PROCEDURE FOR INTER PARTES PROCEEDINGS AND
PROCEEDINGS IN FEDERAL COURT
FEDERAL COURT
Employ the Federal Rules of Civil Procedure –
Discovery including live depositions; Motion Practice
(including Motions to Strike, Dismiss, Compel,
Summary Judgment, etc.; pretrial conferences, trial
(jury trial permitted); findings of fact (for trails without
jury) final briefs;
Firm Logo
AIPLA3
3
RULES OF PROCEDURE FOR INTER PARTES PROCEEDINGS AND
PROCEEDINGS IN FEDERAL COURT
INTER PARTES PROCEEDINGS
Mostly the same as federal Proceeding – The
Federal Rules of Civil procedure apply (with some
exceptions), The Trial is by Deposition testimony and
all objections are decided with the Final Decision;
burden of proof on Plaintiff (Opposer or Petitioner)
Firm Logo
AIPLA4
4
JUDGMENT - OPPOSITION/CANCELLATION vs. ACTION FOR
INFRINGEMENT
ACTION FOR INFRINGEMENT
An action for Infringement is a proceeding in which a
party seeks to prevent a party from using a mark. A
prevailing party is generally entitled to an injunction,
monetary damages and under extraordinary
circumstances attorney’s fees. GENERALLY, THE
PLAINTIFF’S UTLIMATE GOAL IS AN ORDER
ENJOINING
THE FURTHER USE OF THE MARK.
Firm Logo
AIPLA5
5
JUDGMENT - OPPOSITION/CANCELLATION vs. ACTION FOR
INFRINGEMENT
OPPOSITION/CANCELLATION
•The TTAB can only decide the right to register a
mark. An Opposition is a proceeding, in which a
party seeks to prevent a pending application for a
mark from being granted registration. A cancellation
is a proceeding in which a party seeks to cancel an
existing registration
Firm Logo DAMAGES AND INJUNCTIVE
•MONETARY
RELIEF ARE NOT AVAILABLE
AIPLA6
6
GROUNDS FOR OPPOSITION/CANCELLATION
•
•
•
•
•
•
•
•
•
•
•
•
•
•
•
•
•
•
•
•
•
•
•
•
Likelihood of confusion with a registered mark.
Likelihood of confusion with a not-abandoned mark or trade name used previously by another in the U.S.
Merely descriptive of goods or services for which it is used.
Deceptively misdescriptive of goods or services for which it is used.
Primarily geographically descriptive of goods or services for which it is used.
Primarily geographically misdescriptive of goods or services for which it is used.
Primarily merely a surname.
Geographically deceptive.
Disparaging of members of a particular group.
Is scandalous.
Falsely suggests a connection with opposer.
Is de jure functional design.
Is a product design that is not de jure function but has not acquired distinctiveness.
Lacked bona fide commercial use prior to filing use-based application.
Lacked bona fide intent to use as of filing date of ITU application.
Not rightfully owned by applicant at the time application was filed.
Is a color combination that has not acquired distinctiveness.
Is comprised of multiple marks sought to be registered from a single application.
Has been abandoned through nonuse.
Has been abandoned through conduct that has caused loss of trademark significance.
Is the name of a particular living individual who has not consented to registration.
Is generic of goods or services for which it is used.
Firm
Logofamous mark.
Would dilute
opposer's
AIPLA7
7
GROUNDS FOR INFRINGEMENT
• The defendant is using a confusingly similar mark in such a
way that it creates a likelihood of confusion, mistake and/or
deception with the consuming public.
• Many of the other grounds for Opposition/Cancellation are
not grounds for infringement i. e. the fact that a mark may
be descriptive is not a ground for injunction. A party is not
damaged by a third-party’s use of a descriptive mark or a
surname etc. Damage would occur if a party were granted
a registration for a descriptive mark because this would
create the presumption of exclusivity to a descriptive term
etc.
• Certain
claims predicated on False Advertising are
Firm Logo
permitted under Section 43(a) of the trademark on the
Trademark Act.
AIPLA8
8
• Primary Basis for OPPOSITION/CANCELLATION and
ACTION FOR TRADEMARK INFRINGEMENT–
Likelihood of Confusion - The likelihood of confusion test
turns on several factors usually known as the "Polaroid
Factors”, including:
•
•
•
•
•
•
•
Strength of the plaintiff's trademark
Degree of similarity between the two marks at issue
Similarity of the goods and services at issue
Evidence of actual confusion
Purchaser sophistication
Quality of the defendant's goods or services
Whether
the defendant's attempt to register the trademark
Firm Logo
was bona fide (in good faith).
AIPLA9
9
EVIDENCE – BURDEN OF PROOF
FEDERAL COURT
Burden of Proof on Plaintiff – Decision based on
actual facts of use including the relevant Polaroid
Factors
Firm Logo
10
AIPLA
10
EVIDENCE – BURDEN OF PROOF - continued
INTER PARTES PROCEEDINGS
Burden of Proof on Plaintiff – (but there is sometime
a presumption favoring the registrant) – Decision
based on the relevant Polaroid Factors, BUT the
Decision may be based on all reasonable
assumption derived from the identification of goods
and services
Firm Logo
11
AIPLA
11
OPPOSITION vs. INFRINGEMENT ACTION
SPRAYCO for spray bottles Applicant
SPRACO for spray nozzles –
Opposer/Registrant
Firm Logo
12
AIPLA
12
OPPOSITION/CANCELLAT
ION
• Notwithstanding the true
nature of the actual goods,
the Board concluded that
the spay nozzles wording
could include spray nozzles
for garden hoses Both
goods can be used for
home garden care and
therefore the marks are
confusingly similar and the
priorFirm
userLogo
would prevail.
No infringement since the true
goods are sold through
different channels of trade to
different customers for
different purposes
13
AIPLA
13
OPPOSITION VS. INFRINGEMENT ACTION
NEW YORK JEANS CO.
for jeans
(Applicant/DefendantJunior
User)
The actual goods are a
inexpensive jeans made for
sale exclusively at as a Walmart.
Firm Logo
NYC for line of women's
clothing
(Opposer/Plainitff/Senior User)
The actual goods are an
very expensive high-end
line of women’s clothing
sold at Saks 5th Avenue,
Lord and Taylor,
Bloomingdales, Norstrom’s
and the like.
14
AIPLA
14
Opposition vs. Infringement Action - continued
OPPOSITION
INFRINGEMENT ACTION
In an Opposition based on
priority, the Senior
user/Opposer probably
prevails because the marks
are very similar, the goods of
the jeans overlap with the
goods of the Senior user’s
registration so that identical
are involved. Absent any
restriction in the identification
of goods,
the
goods are
Firm
Logo
presumed to move in all
reasonable channels.
In an infringement action, the
defendant might prevail. This
is a close case, but it could be
argued that the marks are
different, that the goods move
through different channels of
trade – discount store vs. highend fashion, that the
purchaser's of high-end
fashions might exercise care in
their purchases;
15
AIPLA
15
Thanks for your attention! Questions?
GEORGE W. LEWIS, ESQ.
MEMBER
Westerman, Hattori, Daniels & Adrian
1250 Connecticut Avenue NW
Washington, D.C.
+1- 202 822-4548
+1-202 669-9899(mobile)
glewis@whda.com
FirmName
Logo
16
AIPLA
16