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Trademark Oppositions and Cancellations

About

Watching out for trademark rights

Avoiding market confusion is paramount for maintaining a strong brand. We carefully review watch notices issued by the European Intellectual Property Office (EUIPO), the UK Intellectual Property Office (UKIPO), and U.S. Patent and Trademark Office (USPTO) for applications that could infringe upon our client’s rights. Treating each opposition and cancellation as a unique matter, we look at the claims and defenses and the relevant evidence in view of our client’s goals, resources, and the merits of the case. From there, we formulate a plan to best achieve the client’s goals, whether by settlement or trying the case.

TTAB litigation at the USPTO

Opposition and cancellation proceedings at the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office are akin to civil litigation, including initial, expert, and pretrial disclosures. Finnegan has a wealth of experience in civil litigation, and we are well prepared to guide our clients through the rules. We have had a substantial practice before the TTAB for decades and typically have approximately 300 to 400 active cases at any time, filing or defending as many as 200 new U.S. oppositions and cancellations each year.

Challenging European and UK trade marks

In Europe and the UK, most trade marks disputes begin with a challenge at the trade mark registry, whether that be by way of opposition, invalidation, or cancellation. As there is no relative grounds examination in the UK or at the EUIPO, rights holders are responsible for policing third party marks and deciding if they wish to make a formal challenge to the validity of the application or registration. We have extensive experience before the both the UK and EUIPO and typically file or defend as many as 50 new EU or UK oppositions and cancellations each year.

Contacts

Danny M. Awdeh
Partner
Washington, DC
+1 202 408 4353
Email
Virginia L. Carron
Partner
Atlanta, GA
+1 404 653 6452
Email
Clare A. Cornell
Partner
London
+44 (0)20 7864 2815
Email
B. Brett Heavner
Partner
Washington, DC
+1 202 408 4073
Email
Laura K. Johnson
Partner
Boston, MA
+1 617 646 1645
Email
Naresh Kilaru
Partner
Washington, DC
+1 202 408 4236
Email
Douglas A. Rettew
Partner
Washington, DC
+1 202 408 4161
Email
Morgan E. Smith
Partner
Palo Alto, CA
+1 650 849 6665
Email
Mark Sommers
Partner
Washington, DC
+1 202 408 4064
Email
Danny M. Awdeh
Partner
Washington, DC
+1 202 408 4353
Email
Virginia L. Carron
Partner
Atlanta, GA
+1 404 653 6452
Email
Clare A. Cornell
Partner
London
+44 (0)20 7864 2815
Email
B. Brett Heavner
Partner
Washington, DC
+1 202 408 4073
Email
Laura K. Johnson
Partner
Boston, MA
+1 617 646 1645
Email
Naresh Kilaru
Partner
Washington, DC
+1 202 408 4236
Email
Douglas A. Rettew
Partner
Washington, DC
+1 202 408 4161
Email
Morgan E. Smith
Partner
Palo Alto, CA
+1 650 849 6665
Email
Mark Sommers
Partner
Washington, DC
+1 202 408 4064
Email

Everyone in this practice

Experience

Sony Group Corporation v. Neil A. Campbell
On behalf of client Sony Group Corporation, Finnegan filed an opposition at the Trademark Trial and Appeal Board (TTAB) against an application for SONISTREAM, which was to be used for downloadable computer software for Internet and broadcast radio scheduling and audio playout. The Board found in Sony’s favor on the dilution claim without needing to reach the likelihood of confusion claim, finding that the SONY mark is “exceedingly famous” and “among the most widely recognized marks in the United States.”

Opp. No. 91245851, TTAB, Judges Zervas, Lykos, Larkin

CFA Institute v. American Society of Pension Professionals & Actuaries et al.
Secured summary judgment of noninfringement for the American Retirement Association’s (ARA) use of its CPFA credential name and program.

3:19-cv-00012, W.D. Va., Judge Moon

Ambev S.A. v. Cervejaria Petropolis SA
Obtained affirmance from the Federal Circuit of a Finnegan trial victory before the Trademark Trial and Appeal Board (TTAB) in cancellation proceeding over FUSION mark for energy drinks.

19-1132, Fed. Cir., Judges Prost, Moore, Wallach
Opposition No. 92059437, TTAB, Judge McCormack

Combe Incorporated v. Dr. August Wolff GMBH & Co. KG Arzneimittel
After a full trial before the U.S. District Court for the Eastern District of Virginia, on an appeal from a Trademark Trial and Appeal Board (TTAB) case, obtained a ruling that the parties’ VAGISIL and VAGISAN marks conflict and that “VAGISIL is a famous mark that has attained substantial commercial strength.”

1:17-cv-00935, E.D. Va., Judge Ellis

Henkel IP & Holding GmbH v. Orora North America Corporation
Represented Henkel IP & Holding Gmbh and its well-known LOCTITE mark and product line in an opposition before the TTAB against Orora Packaging Solutions application for the mark LOK-IT ADHESIVES. The matter recently favorably resolved with abandonment of the LOCK-IT ADHESIVES application.

Oppos. No. 91232300, TTAB, Judge Dunn

Charming Charlie LLC v. Caulfield Clothing LLC

Represented Charming Charlie before the TTAB in a trademark Opposition against Caulfield Clothing related to its registration of a “C” logo that was confusingly similar to Charming Charlie’s own C Logo.  Case resolved with abandonment of the application.

Opp. No. 91232209, TTAB, Judge McKnight

More

Insights

INCONTESTABLE® Blog

TTAB Affirms Refusal of MARIO’S for Clothing Due to Likelihood of Confusion with MARIO’S 3.10 for Retail Apparel Stores

February 26, 2026

Federal Circuit IP Blog

Federal Circuit Affirms Cancellation of Registration Based on Priority of Common Law Rights

January 13, 2026

Federal Circuit IP Blog

Federal Circuit Reverses TTAB: Strength of Mark Depends on Commercial Association

January 13, 2026

Federal Circuit IP Blog

Prosecution History Negates Finding of Patent Infringement in Mixed Decision on Patent, Trademark, and Trade Dress

November 10, 2025

Federal Circuit IP Blog

Federal Circuit Clarifies Prosecution History Disclaimer in Design Patents and Reverses Finding of Design Patent and Trademark Infringement

October 27, 2025

Federal Circuit IP Blog

Federal Circuit Vacates TTAB Decision Finding Likelihood of Confusion and Remands for Further Analysis of Third-Party Uses of Similar Marks in Use on Similar Services

October 27, 2025

More

News

Award/Ranking

In the 2026 World Trademark Review 1000, Finnegan Called “The Best of the Best”

February 2, 2026

Award/Ranking

Finnegan and Two Partners Earn Recognition in World IP Review 2025 USA Trademarks Guide

December 15, 2025

Award/Ranking

Finnegan Named Law Firm of the Year for Patent Law in the 2026 Best Law Firms Rankings

November 6, 2025

Award/Ranking

World Trademark Review Names Three Finnegan Partners to its 2025 Global Leaders List

June 11, 2025

Award/Ranking

Finnegan Remains a Top Tier Firm in the 2025 Managing Intellectual Property IP Stars Rankings

May 30, 2025

Media Mention

TTAB: KINGS ARMOR Mark for Various Apparel Products Succumbs to Cancellation Challenge

April 3, 2025

More

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