An opposition to a trademark application may be based on Section 2(d) of the Lanham Act, because of a likelihood of confusion with a pre-existing trademark. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298 (Fed. Cir. 2020), cert. denied, 141 S. Ct. 2671 (2021) (holding that the test in Lexmark is met by demonstrating a real interest in opposing or cancelling a registration of a mark, which satisfies the zone-of-interests requirement, and a reasonable belief in damage by the registration of a mark, which demonstrates damage proximately caused by registration of the mark). The opposer bears the burden of establishing that there is a likelihood of confusion by a preponderance of the evidence. Cunningham v. Laser Golf Corp., 222 F.3d 943 (Fed. Cir. 2000).

As in any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”).

Headstrong Opposition

In Headstrong Foundation v. Head Strong Project Inc., Opposition No. 91249047 (TTAB Jun. 1, 2022), Applicant Head Strong Project Inc. (“Applicant”) applied to register the HEADSTRONG mark for “charitable fundraising in connection with mental health programs for military veterans.” Headstrong Foundation (“Opposer”) opposed the registration based on its ownership of the mark HEADSTRONG FOUNDATION (“FOUNDATION” disclaimed) for “charitable fundraising services for patients and families affected by cancer.” Opposer used HEADSTRONG for its charitable fundraising services before Applicant used HEADSTRONG for any services.

The Trademark Trial and Appeal Board (“TTAB”) found the only difference between Opposer's mark HEADSTRONG FOUNDATION and Applicant's mark HEADSTRONG is the descriptive or generic and disclaimed word “FOUNDATION”; and “[t]his distinction does not make a meaningful difference.” See Cunningham v. Laser Golf Corp., 222 F.3d 943 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that the ‘descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion.'”) (quoting In re Nat'l Data Corp., 753 F.2d 1056 (Fed. Cir. 1985)); see also In re Dixie Rests., Inc., 105 F.3d 1405 (Fed. Cir. 1997) (DELTA, not the disclaimed term CAFÉ, is the dominant portion of the mark THE DELTA CAFÉ). “Because the dominant portion of Opposer's mark is identical to Applicant's mark, the marks are quite similar.”

As for their respective services, the TTAB addressed whether the services are marketed in a manner that “could give rise to the mistaken belief that [the services] emanate from the same source.” Coach Services Inc. v. Triumph Learning LLC, 668 F.3d 1356 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); see also Hewlett-Packard Co. v. Packard Press Inc., 227 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (“Even if the goods and services in question are not identical, the consuming public may perceive them as related enough to cause confusion about the source or origin of the goods and services.”);

[C]onsumers familiar with HEADSTRONG FOUNDATION, a nonprofit/charity that raises funds and provides mental health services for cancer patients, who later encounter HEADSTRONG, a nonprofit/charity focused on fundraising and providing mental health services for veterans, could very well perceive the organizations to be affiliated in some way. Specifically, both entities provide the same types of services under the mark HEADSTRONG, and the fact that their services are provided to different types of recipients could signal not that the providers are unconnected, but instead that one is an affiliate, licensee or outgrowth of the other. This is especially so because cancer patients and veterans are not mutually exclusive classes of consumers. To the contrary, all too many veterans are also cancer patients, and it is common knowledge that some veterans attribute their cancer to events or exposures during their military service. In short, because the parties both provide mental health services and charitable fundraising in connection therewith, the services (as opposed to the channels of trade and classes of consumers) are identical, or at the very least quite closely related. This factor also weighs in favor of finding a likelihood of confusion.

The TTAB sustained the opposition to registration of Applicant's HEADSTRONG mark on the ground of likelihood of confusion.

The trademark attorneys at Thomas P. Howard, LLC are experienced in the prosecution of trademark applications before the USPTO, as well as in enforcing trademarks or defending against infringement claims in litigation nationwide including in Colorado.