The USPTO publishes the Official Gazette (“OG”) as official notice to the public of trademark applications the agency intends to register. The OG is published weekly on Tuesdays and each issue includes bibliographic information and a drawing for each trademark. Any party, such as a trademark owner, “who believes it would be harmed by the registration may file an objection (opposition) within that 30-day period with the Trademark Trial and Appeal Board.” An opposition is similar to a proceeding in a federal court, but is held before the Trademark Trial and Appeal Board (TTAB), an administrative court within the USPTO. The opposing party may also ask the TTAB for an extension of time to file the opposition.
Many businesses regularly check the OG for marks they believe will harm them, as filing an opposition to a trademark application is usually cheaper than challenging a registered mark in court. There are many reasons why a party may bring an opposition, but the opposer must be damaged directly in some way. Keep in mind that the following list is non-exhaustive:
- The mark is deceptive (falsely suggests a connection with the opposer);
- The mark is primarily merely a surname (last name);
- The mark is generic for the Applicant’s goods and/or services;
- The mark is merely descriptive of its goods and/or services;
- The mark is functional for its goods and services;
- The mark would dilute the opposer’s “famous” mark;
Trademark owners usually file oppositions because they believe consumers will confuse their mark with the applied-for mark. The more consumers recognize the trademark, the more likely it is that consumers would be confused by the applied-for mark. However, fame can be difficult to prove. Even if a mark is instantly recognizable, it may not be considered famous. For instance, Apple’s trademark for “app store” was found not to be famous and Apple dropped their suit against Amazon (2011 WL 2638191).
A “brand bully” is a company that files a large amount of oppositions to trademark applications without a strong legal basis. Simply filing trademark oppositions does not make you a brand bully, as active enforcement is necessary to preserve trademark rights. However, many companies file oppositions against marks that would not directly damage them. Brand bullies often rely on the “fame” or “strength” of their marks, even if such fame has not been proven in court. A brand bully is overly aggressive, especially to smaller or weaker trademark applicants It can be intimidating to receive an opposition, and many applicants abandon their trademark application even if they were likely to succeed in defending their applied-for mark.
Top 2017 Opposition Filers
Utilizing public information on the USPTO’s Trademark Status and Document Retrieval (“TSDR”) site, Trademarkia is able to compile a list of the top 25 companies who filed the most oppositions to trademark applications since 1999.
Check out the list of top 10 companies that filed the most oppositions to trademark applications in 2017 below. You can view the full list here.
- Monster Energy Company: The energy drink company has been the top filer of oppositions for the past 7 years – ever since they changed their name from Hansen’s Beverage Corporation in 2012. The company files against most applicants that have “monster” or a 3 claw scratch design as part of their mark, ranging from the NBA to a children’s soccer league in San Antonio, Texas.
- Duke University: The private university in North Carolina is famous for its quality of education and sports. The University has opposed many marks that consumers may confuse for their mascot, the Duke Blue Devils. Duke University also opposes many marks that use “Duke” unrelated to their use of the mark. For instance, the University has a pending opposition against “Duke’s Folly” applied for by a Napa Valley resident for wine (Opposition No. 91238357). Money raised from sports and school merchandise can help offset the cost of education. However, as the second greatest filer of oppositions, one wonders if Duke University should spend their students’ tuition money on something better than going after wineries across the country.
- Under Armour, Inc.: The athletic company files an opposition against most trademarks in Class 25 for clothing that contains the word “armour” or “armor.” The company currently has four oppositions pending against an applicant who applied for “Urban Armor Gear” in Class 25 for t-shirts and hats. They also successfully opposed “Baby Armor” for infant formula (No. 91209101).
- Apple Inc.: The tech giant is very protective of their apple logo and have filed oppositions against other parties trying to register silhouettes of the fruit ranging from an individual selling zippers (No. 91232343) to dermatology services (No. 91214699). Currently Apple, Inc. has an opposition pending against PEAR for computer software (No. 91229082).
- Columbia Insurance Company: The Columbia Insurance Company owns a lot of trademarks that are not used for insurance, such as BORN for footwear, LIFEGUARD for vinyl flooring, and PAMPEREDCHEF for cooking tools. Most of the oppositions Columbia Insurance Company seems to file is against marks that contain “born” such as OLIMP BORN IN THE GYM, where Colombia will likely win on default because the applicant did not file a response (No. 91238196). Columbia Insurance Company is based in Nebraska and has opposed marks such as An idea born in Switzerland and Newborn Ninja.
- Jaguar Land Rover Limited: The luxury car brand mostly opposes applications related to cars that contain “rover” or “jaguar” in the title. In May 2017, the company opposed the trademark application of the shoe company Puma in class 12 (No. 91234490). The Puma logo features the silhouette of a jumping puma while the Jaguar logo features an outline of a jumping jaguar. Jaguar Land Rover Limited withdrew their opposition when Puma amended the goods listed to bicycles and eliminating boats, ski lifts, golf cars, and wheelchairs.
- OMS Investments, Inc.: A subsidiary of the Scotts Miracle-Gro Company, OMS Investments owns a number of trademarks associated with lawn care including MIRACLE-GRO. In 2017, they filed oppositions against marks such as MaxGro for plant nutrients, MediGrow for fertilizers, and PrimaGro for fertilizers. Recently, OMS Investments filed an opposition against Scotty Brand Limited, a Scottish food and drink producer over their mark for “SCOTTY” BRAND that includes an image of a Scottish terrier between the two words. The Scottish company holds a registration in the UK while OMS Investments has 13 registered trademarks for SCOTTS in the US (No. 91239072).
- Trek Bicycle Corporation: The global bicycle company has filed many oppositions against companies that have any form of “Trek” in their trademark application across many different classes including clothing, travel information, wine, and software. In 2017, Trek Bicycle Corporation filed an opposition against TREKIDS, which was filed for dolls’ houses, party favors, and novelty toys, and one on default in January, 2018 because the applicant never responded (No. 91236671). Also in 2017, Trek Bicycle Corporation filed an opposition against SPACE TREK, owned by Atlantis Educational Services, Inc., an education company associated with the Kennedy Space Center. The parties settled and the opposition was withdrawn, allowing SPACE TREK to register for educational services and guided tours related to space exploration.
- Caterpillar Inc.: The construction equipment manufacturer has over 40 registered mark for “CAT” that range in the goods and services from online auctions to rental of equipment. Caterpillar has also owns a trademark for a yellow triangle. The company files a large amount of oppositions against companies that include “cat” in their mark, such as White cat and Kat TV. In May 2017, Caterpillar filed an opposition to Gato, which means “cat” in Spanish. The applied-for mark is owned by a subsidiary of the oil company Halliburton and fits into Class 2 for anti-rust greases and anti-rust oils, and rust preservatives in the nature of a coating. Caterpillar owns CAT which is registered in Class 2 for preservatives against rust in the nature of a coating and against deterioration of wood. The applicant withdrew their application in August, 2017.
- Bear U.S.A., Inc.: The retail clothing company holds a number of marks that include the image of a polar bear and the word “bear.” Bear USA has opposed a number of clothing trademark applications that include the word “bear” such as Sugar Bear, frozen bear, and Yoga Bears. An individual in New York applied in Class 25 for t-shirts for the wordmark SEXY BEAR LIFE and a design mark that included an image of a bear in a suit drinking wine. Bear USA filed an opposition, alleging likelihood of confusion with their marks, but withdrew the opposition when the applicant responded and agreed to add the disclaimer that “no claim is made to the exclusive right to use the term BEAR apart from the mark as a whole.”
It is important for trademark owners to file an opposition against trademark applications that could cause harm to their marks. However, brand bullies often file oppositions against marks that probably will not cause harm to their marks, but can intimate those owners into abandoning their applications. The only way to make bullies stop is to challenge them, which many applicants do not do but instead let their trademarks abandon. To learn more, read our Guide to Oppositions.
Kate Montgomery is a 3L at Arizona State University’s Sandra Day O’Connor College of Law. Kate previously attended the University of Arizona where she earned her undergraduate degree in Spanish and Philosophy, Politics, Economics, and Law (PPEL). When Kate is not studying or working, she enjoys trivia nights, making costumes, and visiting with friends and family.