Opposing Third-Party Application

Applications for registration on the Principal Register are published prior to registration. The publication starts a thirty (30) day window for third-parties to challenge the application by way of an Opposition. If additional time is needed to file an Opposition, a request for an extension must be filed within the initial thirty (30) day period. Common grounds for filing an Opposition are listed below.

Grounds for Opposition

Priority and likelihood of confusion
Trademark Act Sections 14(1) and 2(d)
The mark is merely descriptive
Trademark Act Sections 14(1) and 2(e)(1)
The mark is or has become generic
Trademark Act Section 14(3), or Section 23 if on Supplemental Register
The mark is deceptively misdescriptive
Trademark Act Sections 14(1) and 2(e)(1)
The mark is primarily geographically descriptive
Trademark Act Sections 14(1) and 2(e)(2)
The mark is primarily geographically deceptively misdescriptive
Trademark Act Sections 14(1) and 2(e)(3)
The mark is primarily merely a surname
Trademark Act Sections 14(1) and 2(e)(4)
The mark comprises matter that, as a whole, is functional
Trademark Act Sections 14(1) and 2(e)(5), or Section 23 if on Supplemental Register
No use of mark in commerce before application, amendment to allege use, or statement of use was filed
Trademark Act Sections 14(1) and 1(a), (c), and (d)
Abandonment
Trademark Act Section 14(3)
Failure to function as a mark
Trademark Act Sections 14(1) and 1,2 and 45
The mark is not inherently distinctive and has not acquired distinctiveness
Trademark Act Sections 14(1) and 1,2 and 45; and Section 2(f)
Dilution by blurring
Trademark Act Sections 14(1) and 43(c)
Dilution by tarnishment
Trademark Act Sections 14(1) and 43(c)
Registrant not rightful owner of mark for identified goods or services
Trademark Act Sections 14(1) and 1
False suggestion of a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute
Trademark Act Sections 14(3) and 2(a)
Deceptiveness
Trademark Act Sections 14(3) and 2(a)
Geographic indication which, if used on or in connection with wine or spirits, identifies a place other than the origin of the goods
Trademark Act Sections 14(3) and 2(a)
The registration is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used
Trademark Act Section 14(3)
Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof
Trademark Act Sections 14(3) and 2(b)
Consists of or comprises a name, portrait, or signature of a living individual without written consent, or the name, portrait, or signature of a deceased president without the written consent of the surviving spouse
Trademark Act Sections 14(1) and 2(c)
Continued registration barred by claim or issue preclusion
Mayer/Berkshire Corp. v. Berkshire Fashions Inc., 424 F.3d 1229, 76 USPQ2d 1310 (Fed. Cir. 2005)
Fraud on the USPTO
Trademark Act Section 14(3); In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009)
Violates the provisions of Trademark Act § 4
Trademark Act Section 4 (collective and certification marks) and Sections 14(3) and (5)
Misuse of registration symbol
Copelands’ Enterprises Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295 (Fed. Cir. 1991)
Title of single creative work
Trademark Act Sections 1,2 and 45, Mattel Inc. v. Brainy Baby Co.,101 USPQ2d 1140 (TTAB 2011)