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[jvc689]

We are a small company who recently received a Trademark in the USA for the first two words of our corporate name. During the publishing phase as to Opposition a very large company has filed an opposition to our trademark. They have the same first word in their corporate name and a different second word. They have a trademark on their first two words that predates our trademark. Our companies are in different fields of business.

It has become apparent in negotoations that they are also after us to change our corporate name in which we have much goodwill as well as identity.

Every bit of information we have suggests we could win the case for our Trademark. But we simply can not afford the process.

If we let them win the Trademark issue by default because we can not afford the defense process:

1. What strategy can we best employ to protect against their next step likely against our corporate name

2. If a next step is pursued by them, would it be in the Trademark office or Federal Court.

3. If we let them win the TM issue by default, can we sue them in Federal Court for abuse of process. We think a suit in Fedreal court would be less expensive than through the Trademark office.

Any sound advice is appreciated, even if not on points abpve. Our TM Attorney filer is not a litigater, hence these questions.

[OMG IP]

Are you saying your TM attorney says there's no liklihood of confusion with your TM application and the TM/name used by Megacorp?

If they sue for trademark infringement, it will not be with the USPTO.

[jvc689]

Hi and thank you for responding.

Our Trademark attorney says there is no liklihood of confusion.
However there is an opposition filed and we have to answer.
We were told we would be lucky to get by with $50,000 to $100,000
to defend in Trademark venue. So we are trying to negotiate something out.

If we can not negotiate the loss of our Trademark with non litigation
over our corporate name, we need options to defend our corporate
name premptively or do we just wait for them to sue and answer in court.
We are thinking premptively in Federal Court close to us,
as we believe their action in the Trademark venue is truly abuse of process.

I hope this makes sense and appreciate feedback.

[OMG IP]

You're in a tough spot, as there is always risk in doing business.  Just because you don't infringe doesn't mean you can't be sued by anyone at anytime.

I digress...

Did you get an actual opinion (i.e., written document) on no liklihood of confusion based on case law/Dupont factors?  The 50K-100K is legal fees, not government fees, correct?

You are right -- if Megacorp doesn't want you using that name, their TM registration gets them Fed JRD.  In some manner of speaking, they are compelled to enforce their rights, or risk losing them.

Check PM.

[Kaitlin]

First, a BIG CAVEAT:  Never discuss real facts that could identify you in a public forum in any matter under threat of litigation.
You can use "modify" to go in and change your original post to remove any actual reference to the type of product at issue.  Try to use fictitious terms that approximate the same relationship.  Your opposition may very well be reading what you post in this forum, and if they recognize you be assured they will use what they can against you--the least of that being the tactical advantage of knowing your economic concerns.  Beyond that, anything you say which can be put in a detrimental light may be able to be presented in litigation as an "admission against interest". 

Now, to the matter at hand (always bearing in mind the disclaimer below). 

I would be astounded to learn that a trademark opposition or cancellation would ever be more expensive than litigation in Federal court.  Unless things have really flipped in the last ten years, that sounds way off the mark to me.  (Not sure if the same would hold true when measured against a state court proceeding, but I still think litigation before the TTAB (Trade Mark Trial and Appeal Board) would be the cheaper of the two.) 
Sounds to me like you need to be speaking with a trademark attorney who really knows the ins and outs of TM litigation ASAP. 
 
Ideally, you should have someone whose skills are well honed in TM litigation who is able to look Megacorp in the eye without flinching.  But you also need someone honest enough to be realistic with you about the risks and costs of doing so.  Sounds like your current attorney is willing to lay out the risks as s/he sees them, but may not have the experience and/or chutzpah to stand up to these folks.

If you successfully defend the opposition, that could get Megacorp to back off -- if they know you're willing to fight them.  If you let them win on the opposition, that puts you one down in my estimation.

While some jurisdictions may have actions for "trade name" infringement, my impression is that this is due to a confusion on the part of the legislatures over the difference between a trade name and a trademark and expect that the case law would follow trademark principles.  If this is so, and you are in the clear as to trademark, that should then put you in the clear as to your trade name* I would think--since you're using your trade name as your mark, as I understand.  (Although the reverse scenario would not be true.) 

It's been over a decade since I did any TM litigation and my recollection on the rules of res judicata and collateral estoppel (two means of preventing a litigant from suing on an issue that's already been decided) are already somewhat hazy.  Still, I feel that even if success in an opposition proceeding might not be a complete bar a later federal suit, at a minimum a successful opposition would be strong evidence of non-infringement--and enough to make Megacorp consider whether they might get socked with attorneys' fees if they move against you again.   

And if keeping the corporate name is important,* if a successful opposition would put an end to the matter that would certainly be a lot less expensive than ether defending or initiating a federal suit. 

I hope other litigators with recent experience will chime in here; I hate to see the megacorps twist the law to steam roll over the small guys. 

----------
Also note that even if you want to settle, you're in a better negotiating position if they think you're willing to take them on if you don't get your minimum demands. 

====addendum
*If you're concerned about the goodwill in your corporate name, then you're really concerned about its use as a trademark.  If you're worried only about changing your stationery and official name on documents, then that's purely a trade name issue.  When a trade name is used to identify not just the business entity but also to identify goods or services to the consuming public as coming from a common source, then the trade name is functioning as a trademark.

[Isaac]

Our Trademark attorney says there is no liklihood of confusion.

No likelihood at all?   Perhaps he's right, but none of us can tell because we cannot appreciate the significance of the matching words without knowing the marks in question.  But surely there is some likelihood of confusion.

Exactly what venue are you objecting to?  If your problem is with an action in the patent office, your objection to venue is pretty silly.  As of right now, there is only one US Patent and Trademark Office.

[Kaitlin]

@jvc689
Isaac is quite right that likelihood of confusion -- the standard for trademark infringement -- is rarely a cut and dried analysis, so don't think that your attorney's assessment would necessarily be shared by a court or other tribunal.

Still, make sure you don't bring out the actual terms or other real details for discussion here. 
And remember: the forum is for bouncing around ideas and getting other perspectives, and not for specific legal advice. 

[jvc689]

I am appreciating your comments. The TTAB process as I understand it can be quite expensive. This is how the process was explained at the US Trademark site:
Title Page, Preface, Introduction, & Table of Contents 03/12/04 134 kb toc.pdf
Chapter 100 General Information 03/12/04 783 kb 100.pdf
Chapter 200 Extensions of Time to Oppose 03/12/04 529 kb  200.pdf
Chapter 300 Pleadings 03/12/04 1.06 mb 300.pdf
Chapter 400 Discovery 03/12/04 906 kb  400.pdf
Chapter 500 Stipulations and Motions 03/12/04 1.86 mb 500.pdf
Chapter 600 Withdrawal; Settlement 03/12/04 360 kb  600.pdf
Chapter 700 Trial Procedure and Introduction of Evidence 03/12/04 1.34 mb  700.pdf
Chapter 800 Briefs on Case, Oral Hearing, Final Decision 03/12/04 286 kb 800.pdf
Chapter 900 Review of Decision of Board 03/12/04 413 kb  900.pdf
Chapter 1000 Interferences 03/12/04 193 kb 1000.pdf
Chapter 1100 Concurrent Use Proceedings 03/12/04 624 kb  1100.pdf
Chapter 1200 Ex Parte Appeals 03/12/04 909 kb  1200.pdf
Appendix of Forms 03/12/04 279 kb forms_appendix.pdf
Table of Authorities 03/12/04 1015 kb table_of_authorities.pdf
Index of Subject Matter 03/12/04 1.01 mb  subject_index.pdf

If it goes the full course, I have had a litigation TM estimate it could cost us in the $100,000 range to fight the Opposer.

I have had Federal Court estimates for an abuse of process case estmated at $20,000 to $25,000.

The case law I turned up is:

1.   In line with Section 35(a) of the Lanham Act, courts have discretion to award a prevailing party its attorneys’ fees in “exceptional” trademark cases.  The 7th Circuit, for example, has stated that a suit is oppressive if “it lacked merit, had elements of an abuse of process claim, and plaintiff’s conduct unreasonably increased the cost of defending against the suit.” Even more directly, the court also stated that a trademark case can be exceptional and fees may be awarded “simply on the basis that it is wholly-lacking in merit.”  In the 9th Circuit the court has phrased the standard as “groundless, vexatious or pursued in bad faith.” And in the 2nd Circuit the standard has been phrased as involving fraud or bad faith “a plaintiff’s pursuit of patently frivolous claims is circumstantial evidence of bad faith”).

2.   In a relatively recent case in the Northern District of Illinois, the court granted defendant’s motion for attorneys’ fees following a dismissal by summary judgment of plaintiff’s trademark, unfair competition and dilution claims. In affirming the summary judgment, the Court of Appeals said, upon viewing photographs in evidence, that “[it is next to impossible to believe that any consumer, however careless, would confuse these products.”

It will cost us $1000 just to answer the Opposer allegations.

From what I am hearing here, it is not wise to roll over...and also seek abuse of process advice in Federal Court.

I am open to any other feedback, and just sharing my thoughts on this hypothetical situation.

[Kaitlin]

The TTAB list you show is just a menu of pdf files with information on possible filings -- it is not a road map to a definitive determination of cost.

Nor does the list you show seem to include filing fees.  (But see http://www.bitlaw.com/source/37cfr/2_6.html and http://www.njd.uscourts.gov/genFilingFees.html.  It costs $300 in fees to file an opposition (the equivalent of a complaint in federal court) and $350 to file a complaint (civil action) in federal court.

To the extent the listing does -- in a way --  provide information on the course of litigation, by listing its components, you have to understand that it is modeled on litigation in the courts: just about everything on that list is also served up in larger portions in Federal Court litigation.   

You'll have your complaint and answer and response.
You'll have stipulations, if you're lucky, since they short-cut the process of proving things.
You'll have motions -- some for enlargement (i.e. extension) of time no doubt as well as pre-trial and post-trial motions.  Any time attorneys want the court to do something special they file a motion.
You'll have discovery including interrogatories and requests for production and probably depositions, too.
You'll have a hearing. 
Etc., etc.

Remember that litigation is a la carte and not prix fixe.  Anyone who tells you you can complete a trial for X amount is talking through their hat.  Just because someone estimated an abuse of process case for 20K- 25K -- assuming this is true -- that is absolutely no guarantee that you would be able to do much more than file and lose your case for that amount of money. 

You really need to talk to an attorney* who knows what s/he is doing both in trademarks and in litigation. 

---edit----
*  Your own attorney before whom you can present all the facts under the attorney-client privilege.

[JSonnabend]

I will chime in and say this: obtaining legal fees is difficult at best.  Truly exceptional cases are few and far between.

- Jeff

[Doc]

Am I reading this right?  It sounds like the OP is in the process of registrating the trademark?

"During the publishing phase as to Opposition a very large company has filed an opposition to our trademark."

If that's the case, wouldn't USPTO make the determination?

I too had a very large company oppose our trademark application, but it turned out that because it was a totally different class then theirs, USPTO granted our application.

[Kaitlin]

Am I reading this right?  It sounds like the OP is in the process of [registering] the trademark?

Yes, an opposition would come in the course of registration, not after.  Presume that by saying they "received" a trademark, the OP meant that the trademark had merely been "allowed".  Nevertheless, although the trademark registration hasn't actually been granted yet, the OP probably has a common law trademark based on use -- unless OP is speaking of an intent-to-use (ITU) application. 

If that's the case, wouldn't USPTO make the determination?

By allowing the mark, the trademark office has made its determination that, on the basis of what they've found in their examination, the mark is registrable.  But the purpose of the opposition is to formally litigate whether or not new information provided by the opposer should change that determination before the registration is granted.  This is done at the agency level, before the Trademark Trial and Appeal Board of the USPTO.

What the OP seems to be contemplating if I've understood correctly is to do nothing with the opposition, probably losing by default, and then attempting a pre-emptive strike by seeking a declarative judgment on (infringement of) the trademark and/or suing the opposer for abuse of process in Federal Court (assuming OP would be in Fed. Ct. under diversity jurisdiction).  Lots of problems with that, the least of which is the very likely much greater expense of litigating in Federal Court over the relatively simplified litigation before the TTAB. 

[Doc]

Thank you Kaitlin for your very clear explanation in response to my post.  Believe it or not, I totally understood it.

[Kaitlin]