TRADEMARK OPPOSITION EXAMPLE

In the latest post of “The TTABlog” by John L. Walsh, an example is given of a successful trademark opposition. The trademark examiner had accepted the mark INQUEST for computer research software. The mark was published for opposition for third parties. The owners of the registered mark PROQUEST, registered for information retrieval systems and computer assisted research services filed an opposition (either within the 30 day period or after obtaining an extension of time in order to file an opposition).

“Based upon thousands of pages of exhibits submitted by PROQUEST”, the Trademark Trial and Appeals Board (TTAB) determined that PROQUEST provides electronic and digital solutions and educational resources to institutions and individuals and that the identification of goods and services contained in the applicant’s application (INQUEST) constituted a significant portion of the goods and services offered by PROQUEST.

The Board looked at the likelihood of confusion between the marks. The key considerations are similarities between the marks and the relationship of the goods and services. (See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). Both marks are standard character marks, meaning they can be written in any size, color or style. The Board also found that many of the services described in INQUEST’s application were subject of PROQUEST and that there was a likelihood of confusion notwithstanding the sophistication of the purchasers.

Further, the TTAB looked at evidence of daily use of the services, the market penetration, revenues and the degree of recognition. For the PROQUEST mark (the pre-existing mark) the Board determined there was “widespread recognition and renown.” Accordingly, the opposer (PROQUEST) won and the mark INQUEST was denied registration.