COMPARISON OF INTER PARTES PROCEEDINGS IN THE USPTO AND INFRINGEMENT ACTION IN TRADEMARK DISPUTES

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COMPARISON OF INTER PARTES PROCEEDINGS IN THE USPTO AND INFRINGEMENT ACTION IN TRADEMARK DISPUTES. George W. Lewis, Esq . Presented before the Japanese trademark Association April 9, 2014. Slide Title. COURT PROCEEDINGS TYPICALLY COST MORE - A LOT MORE. - PowerPoint PPT Presentation

Transcript of COMPARISON OF INTER PARTES PROCEEDINGS IN THE USPTO AND INFRINGEMENT ACTION IN TRADEMARK DISPUTES

George Lewis - Comparison of Proceedings in Trademark DisputesAmerican Intellectual Property Law Association
COMPARISON OF INTER PARTES PROCEEDINGS IN THE USPTO AND INFRINGEMENT ACTION IN TRADEMARK DISPUTES
George W. Lewis, Esq.
April 9, 2014
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RULES OF PROCEDURE FOR INTER PARTES PROCEEDINGS AND PROCEEDINGS IN FEDERAL COURT
FEDERAL COURT
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INTER PARTES PROCEEDINGS
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; No jury trial
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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.
 
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JUDGMENT - 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
MONETARY DAMAGES AND INJUNCTIVE RELIEF ARE NOT AVAILABLE
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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.
Is scandalous.
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.
Would dilute opposer's famous mark.
 
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GROUNDS FOR INFRINGEMENT
 
 
Certain claims predicated on False Advertising are permitted under Section 43(a) of the trademark on the Trademark Act.
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Degree of similarity between the two marks at issue
Similarity of the goods and services at issue
Evidence of actual confusion
Quality of the defendant's goods or services
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FEDERAL COURT
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INTER PARTES PROCEEDINGS
Burden of Proof on Plaintiff – (but there is sometime a presumption favoring the registrant) – Decision based on the relevant Polaroid Factors
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OPPOSITION/CANCELLATION
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 prior user would prevail.
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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 Wal-mart.
NYC for line of women's clothing (Opposer/Plainitff/Senior User)
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OPPOSITION
In an Opposition based on priority, the Senior user/Opposer probably prevails because the marks are very similar, the goods of the Applicant overlap with the goods of the Senior user’s registration so that identical goods are involved. Absent any restriction in the identification of goods, the goods are presumed to move in all reasonable channels.
INFRINGEMENT ACTION
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GEORGE W. LEWIS, ESQ.