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

1. 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

2. Slide Title COURT PROCEEDINGS TYPICALLY COST MORE - A LOT MORE

3. 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

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

5. JUDGMENT - ACTION FOR INFRINGEMENT 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.

6. 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

7. 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.

8. 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.

9. 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).

10. EVIDENCE – BURDEN OF PROOF FEDERAL COURT Burden of Proof on Plaintiff – Decision based on actual facts of use including the relevant Polaroid Factors

11. 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.

12. OPPOSITION vs. INFRINGEMENT ACTION SPRAYCO for spray bottles - Applicant SPRACO for spray nozzles – Opposer/Registrant

13. OPPOSITION/CANCELLATION No infringement since the true goods are sold through different channels of trade to different customers for different purposes • 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.

14. OPPOSITION VS. INFRINGEMENT ACTION NEW YORK JEANS CO. for jeans (Applicant/DefendantJunior User) 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. The actual goods are a inexpensive jeans made for sale exclusively at Wal-mart.

15. Opposition vs. Infringement Action - continued OPPOSITION 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; 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.

16. Thanks for your attention! Questions? GEORGE W. LEWIS, ESQ. MEMBER Westerman, Hattori, Daniels & Adrian 1250 Connecticut Avenue NW Washington, D.C. +1- 202 822-4548 +1-202 669-9899(mobile) glewis@whda.com Name