11 AIPLA

Firm Logo

American Intellectual Property Law Association

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

22 AIPLA

Firm Logo

Slide Title

COURT PROCEEDINGS TYPICALLY COST MORE - A

LOT MORE

33 AIPLA

Firm Logo

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; trial trial permitted for full trial

44 AIPLA

Firm Logo

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

RULES OF PROCEDURE FOR INTER PARTES PROCEEDINGS AND PROCEEDINGS IN FEDERAL COURT

55 AIPLA

Firm Logo

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.

 

JUDGMENT - ACTION FOR INFRINGEMENT

66 AIPLA

Firm Logo

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

77 AIPLA

Firm Logo

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.• Would dilute opposer's famous mark.•  

88 AIPLA

Firm Logo

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 permitted under Section

43(a) of the trademark on the Trademark Act.

• Some of the grounds for Opposition/Cancellation might be defense in an in fragment action i.e. The mark is descriptive, the mark is primarily merely a geographical location; the mark is functional, etc.

99 AIPLA

Firm Logo

• 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

was bona fide (in good faith).

1010 AIPLA

Firm Logo

EVIDENCE – BURDEN OF PROOF

FEDERAL COURT

Burden of Proof on Plaintiff – Decision based on actual facts of use including the relevant Polaroid Factors

1111 AIPLA

Firm Logo

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. Unless there is some restriction in the identifcation og goods, it is presumed that all goods move in all normal channels.

1212 AIPLA

Firm Logo

OPPOSITION vs. INFRINGEMENT ACTION

SPRAYCO for spray bottles - Applicant

SPRACO for spray nozzles – Opposer/Registrant

1313 AIPLA

Firm Logo

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.

No infringement since the true goods are sold through different channels of trade to different customers for different purposes

1414 AIPLA

Firm Logo

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)

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.

1515 AIPLA

Firm Logo

Opposition vs. Infringement Action - continued

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

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. high-end fashion, that the purchaser's of high-end fashions might exercise care in their purchases;

1616 AIPLA

Firm Logo

Thanks for your attention! Questions?

GEORGE W. LEWIS, ESQ.MEMBER

Westerman, Hattori, Daniels & Adrian

1250 Connecticut Avenue NWWashington, D.C.

+1- 202 822-4548+1-202 669-9899(mobile)

glewis@whda.com

Name