Answer to Notice of Opposition
(Likelihood of Confusion, False Suggestion of a Connection, Dilution) (TTAB)

Summary

This template is an answer responding to a notice of opposition filed at the Trademark Trial and Appeal Board (TTAB) seeking to prevent registration, in whole or in part, of a federal trademark application on the grounds of likelihood of confusion, false suggestion of a connection, and dilution. This template includes practical guidance, drafting notes and alternate clauses. This template answer responds to the allegations in the corresponding template Notice of Opposition (Likelihood of Confusion, False Suggestion of a Connection, Dilution) (TTAB). An answer generally includes responses to the opposer's allegations, affirmative defenses, and if applicable any counterclaims against the opposer. See 37 C.F.R. § 2.106(b)(2)–(3). Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 311.02. This template includes sample proposed affirmative defenses which should be modified to fit your circumstances. This template also includes a sample counterclaim seeking to cancel the registration pleaded by the opposer on the grounds of functionality. Service of Notice of Opposition and Deadline for Filing Answer An opposer does not serve the notice of opposition. TBMP § 309.02(c)(1); 37 C.F.R. § 2.105(a). Instead, upon the filing of a notice of opposition the TTAB prepares a notice of institution which: • Identifies the proceeding as an opposition and assigns an opposition number • Identifies the application(s) that are subject of the proceeding • Includes a web link or address to the Electronic System for Trademark Trials and Appeals (ESTTA) record (the TTAB's electronic filing system) for the proceeding • Specifies the deadline for the applicant to file an answer which is typically 40 days from the mailing date of the notice of institution (but must be at least 30 days from the mailing date) • Sets forth the remaining schedule for the proceeding including deadlines for: ○ The discovery conference ○ Initial and expert disclosures ○ Opening and closing of the discovery period ○ Pretrial disclosures ○ Testimony periods ○ Final briefs ○ Optional request for oral hearing 37 C.F.R. §§ 2.105(a), 2.120(a)(1), 2.121(a); TBMP §§ 310.01(a), 310.03(a). See TBMP Appendix E and F for sample scheduling orders. The TTAB serves the notice of institution on the defendant applicant's attorney or other authorized representative if of record at the U.S. Patent & Trademark Office (USPTO), otherwise to the applicant directly, by email (or U.S. mail if no email address is of record in Trademark Status & Document Retrieval (TSDR)) and it constitutes service of the notice of opposition. 37 C.F.R. § 2.105(a), (c). Note, trademark applicants have a duty to maintain a valid email address of record at the USPTO for correspondence. 37 C.F.R. § 2.23(b). If the defendant applicant is not represented by an attorney or other authorized representative and the notice of institution is returned as undeliverable, the TTAB takes the following steps: • Uses all reasonable efforts to locate the applicant • If the TTAB is unable to locate the applicant, it may publish a notice of the filing of the opposition in the USPTO Official Gazette 37 C.F.R. § 2.118; TBMP § 310.02. An applicant will have 30 days from the date of publication to appear or risk default. Examples of service by publication may be reviewed in the Official Gazette on the USPTO website. You can request an extension of the deadline to file an answer as follows: • If the other party agrees to the extension, file using the "consent motions" options in ESTTA which will automatically generate a new schedule with all the required deadlines which the TTAB can then review and issue an order if approved. • Alternatively, if the other party agrees, but the automatically generated schedule does not reflect all of the parties' agreed to deadlines, or the parties wish to alter the automatic deadlines then file a stipulation or consent motion in ESTTA using the "general filings" option: ○ Make sure to include all the deadlines that appear in a regular schedule for opposition proceedings ○ Submit the deadlines in the same format as it appears in a notice of institution ○ TTAB will review and then issue an order if approved • If the other party does not agree, then file a contested motion with the TTAB: ○ You must include detailed facts showing good cause supporting the extension; merely conclusory allegations are insufficient. ○ If the TTAB grants the motion it will usually reset all the deadlines in the proceeding, but to avoid any issues you should also include a request in your motion that all deadlines be reset. ○ The TTAB has the option where it believes it would be beneficial to hold a telephone conference with the parties regarding the motion; otherwise, an opposer must file an opposition within 20 days of being served with the motion. ○ If the opposer ▪ Does not file an opposition brief, the TTAB may grant the motion as conceded ▪ Contests the motion, then the TTAB will decide the motion on the merits Fed. R. Civ. P. 6(b); 37 C.F.R. §§ 2.121(d), 2.127(a), 2.120(j)(1); TBMP §§ 310.03(c), 509.01(a), 509.01(b)(1). Default If the defendant applicant does not file an answer by the deadline, then: • The TTAB may issue a notice of default; –or– • The opposer may file a motion for default judgment (which serves as a substitute for the TTAB's issuance of a notice of default). 37 C.F.R. § 2.106(a); TBMP § 312.01. The TTAB tolls all other deadlines in the proceeding while it determines the issue of default. 37 C.F.R. § 2.106(a). A default notice advises that: • Defendant: ○ Did not file an answer or an extension of time of the answer deadline ○ Has 30 days from the mailing date of the default notice to show cause why the TTAB should not enter default judgment against it pursuant to Fed. R. Civ. P. 55(b)(2) • The TTAB: ○ Is entering notice of default under Fed. R. Civ. P. 55(a) ○ Will toll all other deadlines in the proceeding while it determines the issue of default ○ Will reset all deadlines in the schedule in the event it resumes the proceeding See TBMP § 312.01; 37 C.F.R. § 2.106(a). You can review an example of a notice of default in the TTABVUE record for Opposition No. 91247104. A defendant may establish good cause to set aside the default notice by showing: • The delay in filing an answer was not the result of willful conduct or gross neglect on its part. • The opposer will not be substantially prejudiced by the delay; –and– • Defendant has a meritorious defense to the action. DeLorme Publ'g Co. v. Eartha's, Inc., 60 U.S.P.Q.2D (BNA) 1222, 1223 (TTAB 2000). You should also file the answer with your response to the default notice. TBMP § 312.01. The decision of whether to enter default judgment is solely within the TTAB's discretion, but the TTAB will resolve all doubt in favor of the defendant based on the policy favoring deciding cases on the merits. TBMP § 312.02. If the TTAB enters default judgment against the defendant, then the TTAB will consider the same factors noted above in deciding whether to set aside the default judgment. However, the TTAB will likely be less lenient in evaluating the defendant's response. See TBMP § 312.03. Elements of Grounds for Opposition It is helpful to keep in mind what an opposer must show to establish its grounds for opposition to assist you with developing a strategy for your response, including: • Identifying potential affirmative defenses and/or responses to an opposer's allegations • Avoiding any inadvertently harmful admissions Likelihood of Confusion A notice of opposition on the grounds of likelihood of confusion requires that the opposer plead (and later prove) that: • It has priority of use of its alleged trademark (i.e., proprietary rights in its trademark that are prior to the applicant's rights in the challenged mark). (For more on priority, see Drafting Note to Answer Paragraph ) –and– • Applicant's mark as used on goods and/or services so resembles opposer's prior trademark as to be likely to cause confusion, mistake, or to deceive. See 15 U.S.C. § 1052(d); Azeka Bldg. Corp. v. Azeka, 122 U.S.P.Q.2D (BNA) 1477, 1483, 1488 (TTAB 2017) (likelihood of confusion claim failed where opposer could not demonstrate priority of use of its pleaded mark); Omaha Steaks Int'l v. Greater Omaha Packing Co., 908 F.3d 1315, 1319 (Fed. Cir. 2018). In evaluating a likelihood of confusion claim the TTAB considers the following 13 du Pont factors: • Similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression • Similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use • Channels of trade • Conditions under which and buyers to whom sales are made (i.e., impulse vs. careful, sophisticated purchasing) • Number and nature of similar marks in use on similar goods • Nature and extent of any actual confusion • Fame of the prior mark • Length of time during and conditions under which there has been concurrent use without evidence of actual confusion • Variety of goods on which a mark is or is not used (house mark, family mark, product mark) • Market interface between applicant and the owner of a prior mark • Extent to which applicant has a right to exclude others from use of its mark on its goods • Extent of potential confusion, i.e., whether de minimis or substantial • Any other established fact probative of the effect of use See In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). The TTAB will consider the factors on which the parties present evidence, but in some cases a single factor may be dispositive, particularly with respect to the similarity of the marks and the similarity of the goods/services. See Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1336 (Fed. Cir. 2001). False Suggestion of a Connection A notice of opposition on the grounds of false suggestion of a connection requires that the opposer plead (and later prove): • Applicant's mark is the same as, or a close approximation of, the name or identity previously used by another person or institution (i.e., here the opposer). • Applicant's mark would be recognized as pointing uniquely and unmistakably to that person or institution. • The person or institution named by the mark or using the mark is not connected with the activities performed by the applicant under the mark; –and– • The prior user's name or identity is of sufficient fame or reputation that a connection with the person or institution would be presumed when the applicant's mark is used to identify the applicant's goods. See Piano Factory Grp., Inc. v. Schiedmayer Celesta GmbH, 11 F.4th 1363, 1377 (Fed. Cir. 2021). See also 15 U.S.C. § 1052(a); Trademark Manual of Examining Procedure (TMEP) § 1202.03(b). Note, an opposer does not need to show likelihood of confusion for a false suggestion of a connection claim. Accordingly, it is "not necessary for application of the false association bar that the registration be directed to the same or similar goods as those of the [opposer], as long as the registered mark falsely suggests a connection with a person other than the registrant." Piano Factory Grp., Inc., 11 F.4th at 1377. However, the similarity of the goods and/or services may be relevant in analyzing the fame or reputation factor if the party's fame is with regards to certain types of goods and/or services rather than fame among the general public. Piano Factory Grp., 11 F.4th at 1380. Dilution A notice of opposition on the grounds of dilution requires that the opposer plead (and later prove): • The opposer owns a famous mark that is distinctive. • Applicant is using a trademark in commerce that allegedly dilutes opposer's famous trademark. • Applicant's use of its trademark began after opposer's trademark became famous; –and– • Applicant's use of its trademark is likely to cause: ○ Dilution by blurring (i.e., an association arising from the similarity between a trademark or trade name and a famous trademark that impairs the distinctiveness of the famous trademark) –and/or– ○ Dilution by tarnishment (i.e., an association arising from the similarity between a trademark or trade name and a famous mark that harms the reputation of the famous mark) See 15 U.S.C. § 1125(c)(1)–(2); Nike, Inc. v. Palm Beach Crossfit, Inc., 116 U.S.P.Q.2D (BNA) 1025, 1030–31 (TTAB 2015) citing Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356, 1371–72 (Fed. Cir. 2012). Response to Opposition Allegations You should respond to each allegation in numbered paragraphs corresponding to the numbered paragraphs in the notice of opposition by stating that it is: • Admitted • Denied (which can use any of the forms in Fed. R. Civ. P. 8(b)) –and/or– • You are without knowledge or information sufficient to form a belief as to the truth of the allegation (which has the effect of a denial) 37 C.F.R. § 2.106(b)(2); TBMP § 311.02(a). If an allegation is not numbered (e.g., an introductory paragraph) you can identify it as part of your response as shown in the response to the introductory paragraph in this template. You can also admit or deny an allegation in part but be specific and make sure that any denial fairly meets the substance of the allegation because if you fail to deny any portion of an allegation, it may be deemed admitted. TBMP § 311.02(a); Fed. R. Civ. P. 8(b)(6). You may also respond with one general denial but only if you intend in good faith to controvert all of the allegations contained in the notice of opposition. Fed. R. Civ. P. 8(b)(3). Keep in mind, however, that in so responding you are representing to the TTAB that your denial is warranted on the evidence. Fed. R. Civ. P. 11(b)(4); TBMP § 318. Motion to Dismiss for Failure to State a Claim Instead of filing an answer you may consider filing a motion to dismiss for failure to state a claim. You must show that an opposer has not alleged sufficient facts which, if proven, would establish: • Opposer has an entitlement to a statutory cause of action to bring the opposition (previously standing); –and/or– • Opposer has a valid ground for opposing registration of applicant's trademark. Nike, 116 U.S.P.Q.2D (BNA) at 1028–1029, 1032 (granting motion to dismiss false suggestion of connection claim). The opposer does not need to prove its case in opposing a motion to dismiss; it only has to show that if the facts it alleges are proven it would establish these elements. See TBMP § 503.02. In making a decision of whether to file a motion to dismiss keep in mind that: • The TTAB will accept all well-plead allegations as true and will construe them in favor of the opposer in deciding a motion to dismiss. See Ritchie v. Simpson, 170 F.3d 1092, 1097 (Fed. Cir. 1999). • Opposer may amend its notice of opposition once within 21 days after you serve a motion to dismiss. Fed. R. Civ. P. 15(a): ○ Accordingly, an opposer is likely to respond to a motion to dismiss by filing an amended notice of opposition. ○ The filing of an amended opposition will moot your motion to dismiss. • If the TTAB grants your motion to dismiss, it may give the opposer an opportunity to amend its opposition unless: ○ It would serve no useful purpose ○ Any amendment would be futile because opposer cannot prevail as a matter of law TBMP § 503.03. Examples of potential bases for a motion to dismiss include: • Likelihood of confusion. If the opposer has not alleged a cognizable basis for its priority, see Major League Soccer, L.L.C. v. F.C. Internazionale Milano S.p.A., 2020 TTAB Lexis 502, *18–20 (TTAB 2020) (dismissing legally insufficient likelihood of confusion claim where plaintiff failed to allege "any allegations of prior proprietary rights in a mark . . . [and] has not set forth factual allegations that, all taken as true, constitute a legitimate interest in preventing likelihood of confusion") • False suggestion of a connection. Where an opposer fails to allege the public would recognize the applicant's mark as pointing uniquely to opposer or that applicant's mark is a close approximation of opposer's name or identity, see Nike, 116 U.S.P.Q.2D (BNA) at 1032 ("Fundamental to a pleading of false suggestion of a connection . . . [is] that the identity being appropriated is unmistakably associated with the person or institution identified.") • Dilution. Where an opposer has not plead facts that would establish fame in the United States, see Fiat Group Autos. S.p.A. v. ISM, Inc., 94 U.S.P.Q.2D (BNA) 1111, 1115 (TTAB 2010) (dismissing dilution claim where plaintiff "has not alleged any particular type of use or specific facts which could be proved at trial as demonstrating widespread recognition of its mark in the United States") Any motion to dismiss for failure to state a claim should be filed before, or concurrently with your answer. Fed. R. Civ. P. 12(b). You still have the option of raising the defense after you file your answer by: • Filing a motion for judgment on the pleadings • Filing a motion for summary judgment • Including it as part of your trial submissions See TBMP § 503.01. If you file a motion to dismiss for failure to state a claim after you file your answer, but before the deadline for the opposer's pretrial disclosures, then the TTAB may treat it as a motion for judgment on the pleadings. See TBMP § 504.01. The filing of a motion to dismiss for failure to state a claim will toll the time for filing an answer and the TTAB will suspend the proceeding pending a decision on the motion. 37 C.F.R. § 2.127(d); TBMP § 503.01. If the TTAB denies the motion, it will reset all the deadlines in the proceeding. TBMP § 316. U.S. Attorney Requirement All foreign-domiciled parties in a TTAB proceeding must be represented by an attorney who is licensed to practice law in the United States (i.e., an active member in good standing of the bar of the highest court of any state). 37 C.F.R. §§ 2.11(a), 11.1, 11.14(a). See also TBMP § 114.03. Accordingly, a U.S. attorney must file an answer for any foreign-domiciled trademark applicant whose application is the subject of a TTAB notice of opposition. See Cloudworks Consulting Servs. v. Ongoing Operations, LLC, 2020 TTAB Lexis 10, *2 (TTAB 2020) (U.S. attorney must "file all documents with the Board" for a foreign-domiciled party). The TTAB determines a party's domicile as follows: • For a natural person: permanent legal place of residence • For a juristic entity (i.e., a firm, corporation, union, association, or other organization capable of suing and being sued in a court of law): principal place of business 37 C.F.R. § 2.2(o); 15 U.S.C. § 1127 (definition of "juristic person"). Filing and Formatting Requirements An answer to a notice of opposition: • Must be filed electronically using ESTTA, the TTAB's electronic filing system • Must be in at least 11-point font and double-spaced • Should contain admissions, denials, and any other response to opposer's allegations in numbered paragraphs corresponding to the numbered paragraphs in the notice of opposition • Any supporting exhibits: ○ Must be filed electronically as attachments to the opposition ○ Must be clear and legible ○ That consist of multimedia files such as commercials may be submitted physically via a DVD or CD since ESTTA currently does not accept multimedia files 37 C.F.R. § 2.126(a); TBMP §§ 106.03, 311.01(a), 311.02(a). Keep in mind ESTTA's size limitations for filing: • Each file may not exceed 6 MB • Aggregate of all files attached to a single ESTTA submission may not exceed 53 MB TBMP § 110.02(c). The limited exceptions to the electronic filing requirement are: • ESTTA is unavailable due to technical problems • Extraordinary circumstances such as certain types of technical problems at the filer's location or with the filer's systems 37 C.F.R. § 2.106(b)(1); TBMP § 311.01. If you submit your answer in paper format, it must be accompanied by a petition to the Director explaining the technical problem or your extraordinary circumstances and include the required fee (currently $350.00). 37 C.F.R. §§ 2.106(b)(1), 2.6(a)(15)(i); TBMP § 311.01(c). For more information on opposition proceedings, see TTAB Litigation: Opposition Proceedings. For summaries of TTAB precedential decisions on likelihood of confusion, false suggestion of a connection, and dilution claims, see TTAB Decision Tracker: Likelihood of Confusion, TTAB Decision Tracker: False Suggestion of a Connection, and TTAB Decision Tracker: Dilution. For additional guidance on likelihood of confusion, see Likelihood of Confusion Resource Kit. For more information on dilution, see Trademark Dilution Claims, Remedies, and Defenses, Trademark Dilution Claims: Proving Fame, and Fame Evidence in a Trademark Dilution Case Checklist. For information on Trademark Trial and Appeal Board proceedings in general, see TTAB Proceedings Resource Kit.