Wednesday, August 12, 2015

Wants to Oppose Mark for Genericness

Lockheed-Martin Paveway II Dual Mode Laser Guided Bomb 
Dear Rich: I have a question about opposing a trademark registration. The trademark was recently published for opposition at the USPTO and I have a few reasons to oppose the registration. One of them is genericness. What does it take to oppose a registration? In order to succeed with a genericness opposition, you'll need to show that the public associates the term with an entire genus of goods or service. For example Outdoor Products could not serve as a trademark for backpacks. The Trademark Trial and Appeal Board (TTAB) adjudicates opposition hearings. Here's a sampling of TTAB rulings from recent years:
A term that's generic for some goods is not generic for all -- a term like MOTELS might be generic for hospitality services but not for entertainment services.
What did the examiner do?  A mark that's been published for opposition has been examined and approved by an examining attorney at the USPTO. All legal objections have been resolved. For that reason, it may help to review the history of the application before filing an opposition. You can do this by searching for the mark in the USPTO database and then (once you've located it), clicking the "TSDR" button. That way you can see if the examiner raised genericness as an objection. (The USPTO uses "merely descriptive" to refer to generic terms). We checked the trademark you're opposing and the issue was not raised (not a good sign.)
The opposition procedure. An opposition can be filed by “any person who believes that he or she would be damaged by the registration of a mark.” Unless an extension is granted, the opposition should be filed within 30 days of publication. Unfortunately, it's not as simple as sending in a statement of opposition. Because you are initiating a proceeding at the TTAB, the opposer is required to submit a document that corresponds to a complaint filed in a lawsuit. You can oppose a mark for any reason that registration would be refused. Three helpful resources are the  rules and procedures for TTAB filing, the TTAB's case searching page at the USPTO website and the TTABlog where you can search for TTAB cases. If all of this seems like too much work, you can try a more informal Letter of Protest.