Using Opposition Proceedings to Protect the Distinctiveness of a Brand Name

A recent decision of the Trademark Opposition Board illustrates how a brand owner can use opposition proceedings to protect the distinctiveness of their brand name. Robinhood Markets, Inc. v Robin Hood Inc. 2025 TMOB 73 

The Facts 

Robinhood Markets, Inc. (the Opponent) is a financial services company that offers a mobile app for securities trading and investing and provides information on finance and investing. It owns the registered trademark ROBINHOOD. 

Robin Hood Inc. (the Applicant) applied to register the trademark ROBIN HOOD (the Mark), for use in association with a wide variety of goods and services.  The list of goods and services was sufficiently lengthy to suggest the proposed business might be somewhat speculative.

When the Applicant’s application was advertised in the Trademarks journal the Opponent opposed the application on numerous grounds, but the primary ground asserted that the mark was not registrable because it is confusing with the Opponent’s ROBINHOOD Mark.

The Opposition

The Evidence

The Opponent filed affidavits showing how it carried on business in Canada and the extent to which its trademark had become known. The Applicant tried to file evidence, but its material was not presented by way of an affidavit or declaration that was sworn or affirmed. Because of this the Hearing Officer found that the material was inadmissible, and no regard was had to it. In addition, as the opposition went on to a hearing the Applicant stopped taking part and no submissions were made on its behalf.

The Onus

In an opposition it is important to consider which party bears the onus. The Hearing Officer said that for each ground of opposition, there is an initial evidential burden on the Opponent to present evidence from which it could reasonably be concluded that the facts alleged to support that ground of opposition are true. If this initial burden is met, then the Applicant bears the legal onus of satisfying the Registrar that, on a balance of probabilities, the ground of opposition should not prevent registration of the Mark. If on any ground of opposition, the Opponent’s initial burden is met, and a determinate conclusion cannot be reached once all the evidence has been considered, the ground must be decided against the Applicant.

Test for Confusion

The Hearing Officer provided the following summary. A trademark causes confusion with another trademark if the use of both marks in the same area would be likely to lead to the inference that the goods or services associated with the trademarks are manufactured, sold, leased, hired or performed (as the case may be) by the same person. In addition, where the public will likely assume an applicant’s goods or services are approved, licensed, or sponsored by the opponent, so a state of doubt and uncertainty exists in the minds of the purchasing public, the trademarks are confusing.

The question of confusion is considered as a matter of first impression in the mind of a casual consumer somewhat in a hurry, who sees the applied-for trademark when they have no more than an imperfect recollection of the opponent’s trademark. This casual, hurried consumer does not give the matter any detailed consideration or scrutiny, or examine closely the similarities and differences between the trademarks  

Applying the test for confusion is an exercise in finding facts and drawing inferences.  All surrounding circumstances of the case must be considered, including those listed in section 6(5) of the Trademarks Act, namely:

• the inherent distinctiveness of the trademarks and the extent to which they have become known;

• the length of time the trademarks have been in use;

• the nature of the goods, services or business;

• the nature of the trade; and

• the degree of resemblance between the trademarks, including in appearance or sound or in the ideas suggested by them.

  
  

Conclusion concerning Confusion

The Hearing Officer said that from the perspective of a casual consumer somewhat in a hurry, he was not satisfied that the Applicant had shown the Mark is not confusing with the Opponent’s ROBINHOOD Mark. The trademarks are essentially identical, the Opponent’s trademark has been used for a longer period, and the Opponent’s trademark has become known in Canada to at least some extent, more so than the Mark. Also, absent admissible evidence or submissions from the Applicant, a determinate conclusion could not be reached in respect of the parties’ goods, services, and trade. In these circumstances, he was not satisfied that the likelihood of consumer confusion is less than even.

Comment

It remains to be seen what weight should be given to this decision because the Applicant filed no evidence concerning its position. In addition, in an opposition each case must be assessed on its own evidentiary record and the doctrine of stare decisis does not apply although earlier findings can be persuasive and should be considered.

From the point of view of the brand owner the message is clear that attempts to obtain trademark registrations too close to its registration(s) will be opposed. This approach is directed at ensuring that the distinctiveness of the brand name is not being diminished by use and registration of confusing trademarks.

More details concerning infringement will follow.

If you have questions, please contact me at mckeown@gsnh.com.

John McKeown

Goldman Sloan Nash & Haber LLP

480 University Avenue, Suite 1600

Toronto, Ontario M5G 1V2

Direct Line: (416) 597-3371Fax: (416) 597-3370

Email: mckeown@gsnh.com

These comments are general in nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.

A version of this article originally appeared in the Law360 Canada published by LexisNexis Canada Inc.