What is the Process to Oppose a Trademark Application or Petition to Cancel a Trademark Registration? How Important is Experience Appearing Before the Board? Trademarks that have been approved for publication ((“Publication & Issue Review Complete” or ‘publication/issue review complete’) are published for opposition and may be opposed by anyone who has standing for an opposition and grounds for an opposition. The steps that an opposition proceeding go through is similar to a court trial except that it all takes place on documents that are filed at each step with the Trademark Trial and Appeal Board (TTAB). A Board of trademark judges decides the issues after reading submissions from both parties. One doesn’t have their day in court but rather files documents that are read by judges. A full blown trial proceeding goes on for more than a year but most proceedings, approximately 95%, settle one way or another before trial. All proceedings before the Board (TTAB- Not Just Patents can easily provide you with examples of proceedings and parties represented in opposition and cancellation proceedings. Note that especially for an opposition, a party must have standing at the time of the filing of the complaint (Notice of Opposition for an opposition, Petition for Cancellation for a cancellation). It is best for get help before the first filing. Lack of Standing is not an Affirmative Defense A party's pleading lays the foundation for standing. Thus, if it does not plead facts sufficient to show a personal interest in the outcome beyond that of the general public, the case may be dismissed for failure to state a claim. However, it does not follow that the facts affording a party standing, which as pleaded are sufficient as a matter of law, do not have to be proved by that party. As stated in United States v. Students Challenging Regulatory Agency Procedures, 412 U.S. 669, 689, 93 S.Ct. 2405, 2417, 37 L.Ed.2d 254 (1973): "[I]t is equally clear that the allegations must be true and capable of proof at trial." Lipton Industries, Inc. v. Ralston Purina, 670 F.2d 1024 (C.C.P.A. 1982). An applicant's standing to bring a counterclaim is inherent in its position as defendant in the opposition proceeding. See Syntex (U.S.A.) Inc. v. E.R. Squibb & Sons Inc., 14 USPQ2d 1879 (TTAB 1990); Bankamerica Corp. v. Invest America, 5 USPQ2d 1076 (TTAB 1987). Looking for samples of Notice of Opposition or other trademark opposition samples? TTABVUE at http://ttabvue.uspto.gov/ttabvue/ (Trademark Trial and Appeal Board Inquiry System) is searchable by proceeding number, application number, registration number, mark, party, and correspondent. For instance, if one enters ‘Not Just Patents’ or some other correspondent name in the ‘correspondent’ field and clicks search, all proceedings that involved ‘Not Just Patents’ as a correspondent come up in a chart with Proceeding Filing Date as the left- At the top of the document window, click on the printer icon to print or click on the download arrow to download the individual file being viewed. WHAT ARE THE STEPS IN A OPPOSITION PROCEEDING? TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE June 2018 TBMP 701: [ ] On receipt of a properly filed notice of opposition or petition to cancel (or at the time described in 37 CFR § 2.92 for an interference, see TBMP § 1003, or 37 CFR § 2.99(c) for a concurrent use proceeding which is not based on a court decision or a prior Board decision, see TBMP § 1106.04), the Board serves the complaint to the defendant in the form of a link to, or web address for, the Board’s electronic case file system (‘‘TTABVUE’’) in the notice advising the parties of the institution of the proceeding. The notice includes a trial order setting deadlines for the answer, discovery conference, initial and expert disclosures, discovery, and each party’s required pretrial disclosures, and assigning each party's time for taking testimony and introducing other evidence in the case. [ Note 1.] See TBMP § 310.01 (oppositions and cancellations); TBMP § 1007 (interferences) and TBMP § 1106.04 (concurrent use proceedings). See also TBMP § 403.01. In the trial order, the Board schedules a 30- If there is a counterclaim, or if proceedings have been consolidated and one party is in the position of plaintiff in one of the involved proceedings and in the position of defendant in another, or if there is an interference or a concurrent use registration proceeding involving more than two parties, the Board schedules testimony periods as specified in 37 CFR § 2.121(b)(2), i.e., giving each plaintiff a period for presenting its case in chief as against each defendant, giving each defendant a period for presenting its case and meeting the case of each plaintiff, and giving each plaintiff a period for rebuttal. The testimony periods are separated from the discovery period by a 60- A party may not take testimony or present evidence outside of its assigned testimony period, except by stipulation of the parties approved by the Board, or, on motion, by order of the Board. [ Note 7.] Testimony periods may be rescheduled, extended, shortened or reopened by stipulation of the parties approved by the Board, or on motion granted by the Board, or by order of the Board. [ Note 8.] See TBMP § 501 and TBMP § 509 regarding stipulations and motions to extend or reopen. A stipulation or consented motion to reschedule a deadline for pretrial disclosures and subsequent testimony periods or to reschedule the closing date for discovery and to reschedule subsequent deadlines for pretrial disclosures and testimony periods must be submitted to the Board through ESTTA and must be presented in the form used in a trial order with the relevant dates set forth, specifying the deadline for each subsequent period, including, as applicable, the deadline for initial, expert and pretrial disclosures, the closing date for discovery and testimony periods, and an express statement that the parties agree to the new dates. [ Note 9.] It is preferable, where such a motion is unconsented, that the motion request that the new deadlines be determined, and any period or periods be set to run, from the date of the Board's decision on the motion. See TBMP § 509.02. The resetting of the closing date for discovery results in the automatic rescheduling of pretrial disclosure deadlines and testimony periods, without action by any party. Likewise, the resetting of a party’s testimony period results in the automatic rescheduling of the remaining pretrial disclosure deadlines without action by any party. [ Note 10.] For information regarding extensions of the discovery period and time to respond to discovery requests see TBMP § 403.04 In Board inter partes proceedings, the submission of evidence and testimony during the parties’ assigned testimony periods corresponds to the trial in court proceedings. [ Note 11.] The trial period commences with the opening of the first testimony period. [ Note 12.] See TBMP § 504.01. Cf. TBMP § 528.02. An oral hearing, if requested, corresponds to oral summation in court proceedings. [ Note 13.] See TBMP §802. The Board may sua sponte enter judgment for the defendant in cases where the plaintiff has not submitted evidence or taken testimony during its assigned testimony period where it is clear that the plaintiff has not offered any other evidence. [ Note 14.] NOTES: 1. See 37 CFR § 2.120(a) and 37 CFR § 2.121. 2. See 37 CFR § 2.121(b)(1) and 37 CFR § 2.121(c). 3. See Stagecoach Properties, Inc. v. Wells Fargo & Co., 199 USPQ 341, 356 (TTAB 1978) (thirty- 4. See 37 CFR § 2.121(e). 5. See 37 CFR § 2.121(b)(2) and 37 CFR § 2.121(c). Sample trial schedules can be found in the Appendix of Forms. 6. See 37 CFR § 2.96 and 37 CFR § 2.99(e). 7. 37 C.F.R. § 2.121(a). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) ("The Office is amending § 2.121(a) to clarify that evidence must be presented during a party’s testimony period, codifying current Office practice."). See also Baseball America Inc. v. Powerplay Sports, 71 USPQ2d 1844, 1846 n.8 (TTAB 2004) (documentary evidence submitted outside assigned testimony period given no consideration); M- 8. Fed. R. Civ. P. 6(b); 37 CFR § 2.121(a), 37 CFR § 2.121(c) and 37 CFR § 2.121(d). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) ("The Office is amending § 2.121(c) to add that testimony periods may be shortened by stipulation of the parties approved by the Board or may be extended on motion granted by the Board or order of the Board."). See, e.g., Fairline Boats plc v. New Howmar Boats Corp., 59 USPQ2d 1479, 1480 (TTAB 2000) (motion to extend testimony filed on last day with vague references to settlement and no detailed information concerning apparent difficulty in identifying and scheduling its witnesses for testimony denied); Luemme Inc. v. D.B. Plus Inc., 53 USPQ2d 1758, 1760 (TTAB 1999) (motion to extend denied where sparse motion contained insufficient facts on which to find good cause); Harjo v. Pro- 9. See 37 CFR § 2.121(d). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) ("The Office is amending § 2.121(d) to add that stipulations to reschedule the deadlines for the closing date of discovery, pretrial disclosures, and testimony periods must be submitted through ESTTA with the relevant dates set forth and an express statement that all parties agree to the new dates. These amendments codify current Office practice."). 10. See 37 CFR § 2.121(a). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69963 (October 7, 2016) ("The Office is amending § 2.121(a) to clarify that evidence must be presented during a party’s testimony period. The Office is further amending § 2.121(a) to add that the resetting of a party’s testimony period will result in the rescheduling of the remaining pretrial disclosure deadlines without action by any party. These amendments codify current Office practice."). 11. See 37 CFR § 2.116(e). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69959 (October 7, 2016) ("The Office is amending § 2.116(e) to add that the submission of notices of reliance, declarations, and affidavits, as well as the taking of depositions, during the testimony period corresponds to the trial in court proceedings. The revision codifies current Office practice and is consistent with amendments relating to declarations and affidavits."); Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988) (Board proceedings approximate the proceedings in a courtroom trial); Time Warner Entertainment Company v. Jones, 65 USPQ2d 1650, 1657 (TTAB 2002) (trial in a Board proceeding takes place during the testimony periods). 12. 37 CFR § 2.121(a). 13. 37 CFR § 2.116(f). 14. 37 CFR § 2.132(a). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69968 (October 7, 2016) ("The Office is amending § 2.132(a) to clarify that, if a plaintiff has not submitted evidence and its time for taking testimony has expired, the Board may grant judgment for the defendant sua sponte."). [STEPS IN A CANCELLATION PROCEEDING]
On the Final Briefs Trademark Rule § 2.128 Briefs at final hearing. 37 CFR §2.128 Briefs at final hearing. (a)(1) The brief of the party in the position of plaintiff shall be due not later than sixty days after the date set for the close of rebuttal testimony. The brief of the party in the position of defendant, if filed, shall be due not later than thirty days after the due date of the first brief. A reply brief by the party in the position of plaintiff, if filed, shall be due not later than fifteen days after the due date of the defendant's brief. (a)(2) When there is a counterclaim, or when proceedings have been consolidated and one party is in the position of plaintiff in one of the involved proceedings and in the position of defendant in another of the involved proceedings, or when there is an interference or a concurrent use registration proceeding involving more than two parties, the Trademark Trial and Appeal Board will set the due dates for the filing of the main brief, and the answering brief, and the rebuttal brief by the parties. (a)(3) When a party in the position of plaintiff fails to file a main brief, an order may be issued allowing plaintiff until a set time, not less than fifteen days, in which to show cause why the Board should not treat such failure as a concession of the case. If plaintiff fails to file a response to the order, or files a response indicating that plaintiff has lost interest in the case, judgment may be entered against plaintiff. If a plaintiff files a response to the order showing good cause, but does not have any evidence of record and does not move to reopen its testimony period and make a showing of excusable neglect sufficient to support such reopening, judgment may be entered against plaintiff for failure to take testimony or submit any other evidence. |
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TBMP 309.03(c)(1) Grounds [For An Opposition or a Cancellation] June 2022 (1) Trademark Act § 2(d), 15 U.S.C. § 1052(d): That defendant’s mark so resembles a mark registered in the Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods or services of the defendant, to cause confusion, or to cause mistake, or to deceive. Note 6. |
6. See, e.g., Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005); Shen Manufacturing Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004); Opryland USA Inc. v. The Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1473 (Fed. Cir. 1992); Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002). See also Omaha Steaks International, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686, 1691- |
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(2) Trademark Act § 2(e), 15 U.S.C. § 1052(e): For example, that defendant’s mark, when used on or in connection with the goods or services of the defendant, is merely descriptive or deceptively misdescriptive of them, [ Note 7.] or that defendant’s mark is primarily geographically descriptive [ Note 8.] or primarily geographically deceptively misdescriptive of them [ Note 9.]; or that defendant’s mark is primarily merely a surname [ Note 10.]; or that defendant’s mark comprises any matter that, as a whole, is functional. [ Note 11.] |
7. See Trademark Act § 2(e)(1), 15 U.S.C. § 1052 (e)(1). See also, e.g., The Hoover Co. v. Royal Appliance Manufacturing Co., 238 F.3d 1357, 57 USPQ2d 1720, 1722- Regarding claims under Trademark Act § 2(f), 15 U.S.C. § 1052(f), see Converse, Inc. v. ITC, 909 F.3d 1110, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018) (clarifying and identifying six factors for determining whether a mark has acquired secondary meaning); Real Foods Pty Ltd. v. Frito- 8. See Trademark Act § 2(e)(2), 15 U.S.C. § 1052 (e)(2). See also, e.g., Spiritline Cruises LLC v. Tour Management Services, Inc., 2020 USPQ2d 48324, *12- 9. See Trademark Act § 2(e)(3), 15 U.S.C. § 1052 (e)(3). See also In re California Innovations, Inc., 329 F.3d 1334, 66 USPQ2d 1853 (Fed. Cir. 2003) (the test for determining whether a mark is geographically deceptive under Trademark Act § 2(a), 15 U.S.C. § 1052(a) is the same as determining whether a mark is primarily geographically deceptively misdescriptive under Trademark Act § 2(e)(3), 15 U.S.C. § 1052(e)(3)); In re Save Venice New York, Inc., 259 F.3d 1346, 59 USPQ2d 1778, 1781- 10. See Trademark Act § 2(e)(4), 15 U.S.C. § 1052 (e)(4). See also, e.g., Miller v. Miller, 105 USPQ2d 1615. 1620 (TTAB 2013 (MILLER LAW GROUP primarily merely a surename; no acquired distinctiveness); Michael S. Sachs Inc. v. Cordon Art B.V., 56 USPQ2d 1132, 1136 (TTAB 2000); Allied Mills, Inc. v. Kal Kan Foods, Inc., 203 USPQ 390, 391- 11. See Trademark Act § 2(e)(5), 15 U.S.C. § 1052 (e)(5); TrafFix Devices Inc. v. Marketing Displays Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001); Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 34 USPQ2d 1161, 1165 (1995). See also, e.g., In re Becton, Dickinson and Co., 675 F.3d 1368, 102 USPQ2d 1372, 1377 (Fed. Cir. 2012) and Valu Engineering Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422, 1426 (Fed. Cir. 2002), (citing In re Morton- |
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(3) Trademark Act § 2(a),15 U.S.C. § 1052(a): For example, that defendant’s mark is geographically deceptive, [ Note 12.] that defendant’s mark falsely suggests a connection with plaintiff’s name or identity [ Note 13.], or that defendant’s mark is a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and was first used on or in connection with wines or spirits by the applicant on or after January 1, 1996. [ Note 14.] |
12. See, e.g., Consorzio del Prosciutto di Parma v. Parma Sausage Products, Inc., 23 USPQ2d 1894, 1898 (TTAB 1992) (mark’s geographic deceptiveness must be established as of the time the registration issues). Cf. Corporacion Habanos S.A. v. Anncas Inc., 88 USPQ2d 1785, 1790 (TTAB 2008) (Board declines to consider geographically deceptive claim under Trademark Act § 2(a), 15 U.S.C. § 1052(a)); United States Playing Card Co., v. Harbro, LLC, 81 USPQ2d 1537, 1541 (TTAB 2006) (addressing deceptiveness of a geographic term under the ambit of Trademark Act § 2(e)(3), 15 U.S.C. § 1052(e)(3) rather than Trademark Act § 2(a), 15 U.S.C. § 1052(a) ("The amended Lanham Act gives geographically deceptively misdescriptive marks the same treatment as geographically deceptive marks under § 1052(a).") (citing In re California Innovations Inc., 329 F.3d 1334, 66 USPQ2d 1853, 1856 (Fed. Cir. 2003)); K- 13. See, e.g., Piano Factory Group, Inc. v. Schiedmayer Celesta GmbH, 11 F.4th 1363, 2021 USPQ2d 913, at *11 (Fed. Cir. 2021) (affirming Board decision finding a false suggestion of a connection; explaining difference between Section 2(a) and Section 2(d) claims and four- 14. See Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006) (certification mark recognized as a geographical indication). Cf. In re Spirits International N.V., 86 USPQ2d 1078, 1080 n.2 (TTAB 2008) (refusal based on "deceptiveness" provision of Trademark Act § 2(a), 15 U.S.C. § 1052(a) and not that the mark is a geographical indication); In re Wada, 48 USPQ2d 1689, 1692 n.7 (TTAB 1998) (disclaimer of geographical indication cannot obviate a Trademark Act § 2(a), 15 U.S.C. § 1052(a) refusal). |
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(4) That there was no bona fide use of defendant’s mark in commerce prior to the filing of the use- |
15. See, e.g., Lens.com Inc. v. 1- For TTAB cases, see, e.g., NT- See also Grand Canyon West Ranch LLC v. Hualapai Tribe, 78 USPQ2d 1696, 1697- But see Christian Faith Fellowship Church v. Adidas AG, 841 F.3d 986, 120 USPQ2d 1640 (Fed. Cir. 2016) (reversing Board decision that respondent failed to use its mark in commerce prior to obtaining registration). Cf. Sinclair Oil Corp. v. Kendrick, 85 USPQ2d 1032, 1033 (TTAB 2007) (opposer’s nonuse claim dismissed as moot upon Board’s acceptance of applicant’s amendment of the filing basis of its application from Trademark Act § 1(a) to 1(b), 15 U.S.C. § 1051(a) to (b)); CarX Service Systems, Inc. v. Exxon Corp., 215 USPQ 345, 351 (TTAB 1982) (plaintiff must plead and prove that there was no use prior to filing date; mere claim that dates of use are incorrect does not state a claim of action). |
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(5) That defendant did not have a bona fide intent to use the mark in connection with the identified goods/services as of the filing date of the application under Trademark Act § 1(b), 15 U.S.C. § 1051(b). [ Note 16.] A plaintiff need not allege and prove that the defendant acted in bad faith and intended to deceive the USPTO. The requirements for pleading and proving a lack of a bona fide intent to use a mark do not equate to the requirements for pleading and proving fraud. [ Note 17.] |
16. See, e.g., M.Z. Berger & Co. v Swatch AG, 787 F.3d 1368, 114 USPQ2d 1892, 1897 (Fed. Cir. 2015) (lack of bona fide intent is a proper statutory grounds on which to challenge a trademark application), aff'g 108 USPQ2d 1463, 1471- Cf. Rolex Watch U.S.A. Inc. v. AFP Imaging Corp., 101 USPQ2d 1188, 1190 (TTAB 2011) (capacity to market and manufacture the goods, and identified goods consistent with a nature extension of current product line, rebut the lack of documentary evidence), judgment vacated based on action of defendant on appeal, 107 USPQ2d 1626 (TTAB 2013); Wet Seal Inc. v. FD Management Inc., 82 USPQ2d 1629, 1643 (TTAB 2007) (capacity to market and /or manufacture goods, having produced them in the past under different marks, rebuts claim that applicant lacked bona fide intent to use). 17. See SmithKline Beecham Corp. v. Omnisource DDS LLS, 97 USPQ2d 1300, 1305 (TTAB 2010). |
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(6) That defendant’s mark is a mere background design that does not function as a mark separate and apart from the words displayed thereon. [ Note 18.] |
18. See, e.g., General Foods Corp. v. Ito Yokado Co., 219 USPQ 822, 825 (TTAB 1983), aff’d unpub’d, slip. op. 84- |
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(7) That defendant is not (and was not, at the time of the filing of its application for registration) the rightful owner of the registered mark. [ Note 19.] |
19. See, e.g.,Sock It To Me, Inc. v. Aiping Fan, 2020 USPQ2d 10611 (TTAB 2020) (nonownership claim dismissed; oral intra- See also Shael Norris v. PAVE: Promoting Awareness, Victim Empowerment, 2019 USPQ2d 370880, at *5 (TTAB 2019) (lack of ownership not an available claim against an intent to use application); Treadwell’s Drifters Inc. v. Marshak, 18 USPQ2d 1318, 1320 (TTAB 1990) (ownership claim not available ground for registration over five years old). |
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(8) That defendant’s mark, consisting of a particular color combination applied to its goods, is ornamental and has not become distinctive as an indication of the source of defendant’s goods. [ Note 20.] |
20. See, e.g., Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 34 USPQ2d 1161 (1995); Nasalok Coating Corp. v. Nylok Corp., 522 F.3d 1320, 86 USPQ2d 1369 (Fed. Cir. 2008); Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir.1994), In re Owens- |
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(9) That defendant’s mark, consisting of a particular sound applied to its goods, is not inherently distinctive and has not acquired distinctiveness. [ Note 21.] |
21. See Trademark Act § 1, Trademark Act § 2 and Trademark Act § 45, 15 U.S.C. § 1051, 15 U.S.C. § 1052 and 15 U.S.C. § 1127; Nextel Communications Inc. v. Motorola Inc., 91 USPQ2d 1393 (TTAB 2009) ("chirp" sound). Cf. In re Vertex Group LLC, 89 USPQ2d 1694, 1700 (TTAB 2009) (registration on the Principal Register of the sound emitted by applicant’s product in its normal course of operation only available on a showing of acquired distinctiveness). |
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(10) That defendant’s mark, consisting of trade dress, product design or packaging, is not inherently distinctive and has not acquired distinctiveness. [ Note 22.] |
22. For product design see Wal- For product packaging see Two Pesos Inc. v. Taco Cabana Inc., 505 US 763, 23 USPQ2d 1081 (1992) (trade dress packaging may be inherently distinctive); In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1684 (Fed. Cir. 2010) (court applies four- |
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(11) That the term for which registration is sought or for which registration has been obtained has not been used as a trademark or service mark (i.e. "failure to function" as a mark). [ Note 23.] |
23. See, e.g., University of Kentucky v. 40- See also Couture v. Playdom, Inc., 778 F.3d 1379, 113 USPQ2d 2012 (Fed. Cir. 2015) (service must be offered and actually provided to constitute use in commerce); Aycock Engineering, Inc. v. Airflite, Inc., 560 F.3d 1350, 90 USPQ2d 1301, 1309 n.12 (Fed. Cir. 2009) (registration on Supplemental Register never becomes immune from threat of invalidation on grounds that mark was not used prior to filing date); Anheuser- |
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(12) That defendant’s mark represents multiple marks in a single application (or registration) ("phantom mark"). [ Note 24.] |
24. See, e.g., Cineplex Odeon Corp. v. Fred Wehrenberg Circuit of Theatres, 56 USPQ2d 1538 (TTAB 2000). See also In re Dial- |
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(13) That defendant’s mark has been abandoned due to nonuse with intent not to resume use, and nonuse for three consecutive years shall be prima facie evidence of abandonment, [ Note 25.]; or due to a course of conduct that has caused the mark to lose significance as an indication of source. [ Note 26.] |
25. Trademark Act § 45, 15 U.S.C. § 1127. See, e.g., Linville v. Rivard, 41 USPQ2d 1731 (TTAB 1996), aff’d, 133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir. 1998); Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390 (Fed. Cir. 1990); Peterson v. Awshucks SC, LLC, 2020 USPQ2d 11526, at *16- Cf. Wirecard AG v. Striatum Ventures B.V., 2020 USPQ2d 10086, at *9 (TTAB 2020) (prima facie showing of abandonment rebutted by fact showing registrant’s intent to commence use); General Motors Corp. v. Aristide & Co., Antiquaire de Marques, 87 USPQ2d 1179 (TTAB 2008) (plaintiff could not prove priority because it abandoned mark with no intent to resume use prior to use by defendant); Otto International Inc. v. Otto Kern GmbH, 83 USPQ2d 1861, 1863 (TTAB 2007) (plaintiff must allege ultimate facts pertaining to the alleged abandonment). See also Saddlesprings Inc. v Mad Croc Brands Inc., 104 USPQ2d 1948, 1550- 26. Trademark Act § 45, 15 U.S.C. § 1127. See, e.g., Noble House Home Furnishings, LLC v. Floorco Enters., LLC, 118 USPQ2d 1413, 1422 (TTAB 2016) (abandonment found where parent company’s use of the mark cannot inure to the benefit of the subsidiary that owned the mark); Jack Wolfskin Ausrustung Fur Draussen GmbH v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1133- |
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(14) That defendant’s mark consists of or comprises the name of a particular living individual without the individual’s consent. Trademark Act § 2(c), 15 U.S.C. § 1052(c). [ Note 27.] |
27. See Trademark Act § 2(c), 15 U.S.C. § 1052(c). See also M/S R.M. Dhariwal (HUF) 100% EOU v. Zarda King Ltd., 2019 U.S.P.Q.2d 149090, at *7 (TTAB 2019) (right to preclude registration expired upon death of "particular living individual" who was no longer living at the time of trial); Krause v. Krause Publications, Inc., 76 USPQ2d 1904, 1909 (TTAB 2005), aff’d, slip. op. 2007- But see In re Elster, 26 F.4th 1328, 2022 USPQ2d 195, at *10 (Fed. Cir. 2022) (application of § 2(c) to refuse registration of mark TRUMP TOO SMALL is unconstitutional because "the government does not have a privacy or publicity interest in restricting speech critical of government officials or public figures in the trademark context—at least absent actual malice"). |
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(15) That defendant’s product design is generic. [ Note 28.] |
28. See Sunrise Jewelry Manufacturing Corp. v. Fred, S.A., 175 F.3d 1322, 50 USPQ2d 1532, 1534 (Fed. Cir. 1999) (the term "generic name" as used in Trademark Act § 14(3), 15 U.S.C. § 1064(3) includes trade dress such as product design or configuration); Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, (TTAB 2009). |
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(16) That defendant’s mark would dilute the distinctive quality of plaintiff’s famous mark. [ Note 29.] |
29. See Trademark Act § 13(a) and Trademark Act § 14, 15 U.S.C. § 1063(a) and 15 U.S.C. § 1064; Toro Co. v. ToroHead Inc., 61 USPQ2d 1164 (TTAB 2001). See also Trademark Act § 43(c), 15 U.S.C. § 1125(c); Spotify AB v. U.S. Software, Inc., 2022 USPQ2d 37, at *37 (TTAB 2022) (full analysis of factors of dilution by blurring; finding "exceedingly famous" mark SPOTIFY likely to be diluted by POTIFY); TiVo Brands LLC v. Tivoli, LLC, 129 USPQ2d 1097 (TTAB 2018) (full analysis of factors of dilution by blurring); Omega SA (Omega AG) (Omega Ltd.) v. Alpha Phi Omega, 118 USPQ2d 1289, 1297 (TTAB 2016) (party alleging dilution by blurring must prove that mark(s) became famous prior to any established, continuous use of Applicant’s involved marks, whether as a trademark or trade name, and not just prior to Applicant’s use in commerce of its challenged marks in connection with the goods identified in involved applications); N.Y. Yankees Partnership v. IET Products & Services, Inc., 114 USPQ2d 1497, 1509- But see Fiat Group Automobiles, S.p.A. v. ISM, Inc., 94 USPQ2d 1111, 1113 (TTAB 2010) (the "well known mark" doctrine does not constitute a basis for pleading dilution in the United States, absent a specific pleading of intent to use, the filing of an application for registration, and some basis for concluding that recognition of the mark in the United States is sufficiently widespread as to create an association of the mark with particular products or services, even if the source thereof is anonymous and even if the products or services are not available in the United States). |
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(17) That defendant has used its mark so as to misrepresent the source of its goods or services. [ Note 30.] |
30. See Coca- |
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(18) That defendant has misused the federal registration symbol with intent to deceive the purchasing public or others in the trade into believing that the mark is registered. [ Note 31.] |
31. See Copelands’ Enterprises Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295 (Fed. Cir. 1991); Brown Shoe Co. v. Robbins, 90 USPQ2d 1752, 1758 (TTAB 2009) (mistaken belief that registration of mark in foreign country permits use of symbol); Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1290 (TTAB 2007) (allegation that opposer has misused federal registration symbol construed "as a species of the equitable affirmative defense of unclean hands"); Johnson Controls, Inc. v. Concorde Battery Corp., 228 USPQ 39, 44 (TTAB 1985); Bass Pro Trademarks LLC v. Sportsman’s Warehouse Inc., 89 USPQ2d 1844, 1846 n.3 (TTAB 2008). Cf. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 27 (CCPA 1976) (raised as affirmative defense). |
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(19) That defendant committed fraud in the procurement of its registration or during the prosecution of its application for registration. [ Note 32.] |
32. See Fed. R. Civ. P. 9(b); In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009); Galperti, Inc. v. Galperti S.R.L., 17 F.4th 1144, 2021 USPQ2d 1115, at *5 (Fed. Cir. 2021) (party need not establish secondary meaning of its own uses of mark that is merely a surname, or privity with other users of the mark, for those uses to be counted in determining falsity of claim of substantially exclusive use under § 2(f)); DrDisabilityQuotes.com, LLC v. Krugh, 2021 USPQ2d 262, at *5 (TTAB 2021) (voluntary claim of acquired distinctiveness under § 2(f) is material to examination and can be challenged in a fraud claim); University of Kentucky v. 40- See also Exergen Corp. v. Wal- Cf. Asian and Western Classics B.V. v. Selkow, 92 USPQ2d 1478 (TTAB 2009) (improperly pleaded fraud claim cannot be basis for summary judgment); Zanella Ltd. v. Nordstrom Inc., 90 USPQ2d 1758, 1762 (TTAB 2008) (timely proactive corrective action taken with respect to pleaded registrations raises rebuttable presumption that opposer did not intend to commit fraud); University Games Corp. v. 20Q.net Inc., 87 USPQ2d 1465, 1468 (TTAB 2008) (rebuttable presumption that opposer lacked willful intent to deceive Office arises when registrant amended identification of goods during ex parte prosecution); Tri- Please Note: The Federal Circuit’s decision in In re Bose, 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009), clarified that fraud in a Board proceeding may not be based merely on a finding that a party "knew or should have known" that it was not using its mark on all of the goods or services recited in an application. Additionally, the Board’s decision in Chutter, Inc. v. Great Management Group, LLC, 2021 USPQ2d 1001 (TTAB 2021), appeal docketed, No. 22- |
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(20) That defendant’s registered mark interferes with the registration of a foreign owner’s mark under Article 8 of the General Inter- |
33. See British- |
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(21) That defendant’s application is barred from registration by claim or issue preclusion. [ Note 34.] See also TBMP § 311.02(b). |
34. See Mayer/Berkshire Corp. v. Berkshire Fashions Inc., 424 F.3d 1229, 76 USPQ2d 1310 (Fed. Cir. 2005) (opposition not barred by claim or issue preclusion); Jet Inc. v. Sewage Aeration Systems, 223 F.3d 1360, 55 USPQ2d 1854 (Fed. Cir. 2000) (claim preclusion doctrine did not bar petition to cancel); Zoba International Corp. v. DVD Format/LOGO Licensing Corp., 98 USQP2d 1106 (TTAB 2011) (claim preclusion barred petitions to cancel against two registrations but not a third registration; "defendant preclusion" does not apply to facts of case and further discussed in contrast to "plaintiff preclusion"); Nextel Communications Inc. v. Motorola Inc., 91 USPQ2d 1393, 1398 (TTAB 2009) (finding in prior Board proceeding that mark failed to function with respect to "two- |
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(22) That defendant’s mark is the title of a single creative work and not considered a trademark. [ Note 35.] |
35. See Mattel Inc. v. Brainy Baby Co., 101 USPQ2d 1140, 1142- |
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(23) Trademark Act § 2(b), 15 U.S.C. § 1052(b): Registration of a mark which is "the flag or coat of arms or other insignia of the United States, or of any State or municipality" is prohibited. [ Note 36.] |
36. Cf. In re Alabama Tourism Department, 2020 USPQ2d 10485 (TTAB 2020); In re City of Houston, 101 USPQ2d 1534 (TTAB 2012), aff’d 731 F.3d 1326, 108 USPQ2d 1226 (Fed. Cir. 2013); In re District of Columbia, 101 USPQ2d 1588 (TTAB 2012), aff’d sub nom. In re City of Houston, 731 F.3d 1326, 108 USPQ2d 1226 (Fed. Cir. 2013). |
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(24) That defendant has not established a commercial presence in the country from which its underlying foreign registration issued where such foreign registration forms the basis of the U.S. registration or application for registration. Trademark Act § 44(e); 15 U.S.C. § 1126(e). [ Note 37.] |
37. Kallamni. v. Khan, 101 USPQ2d 1864 (TTAB 2012). |
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(25) That defendant's intent- |
38. See Central Garden & Pet Co. v. Doskocil Manufacturing Co., 108 USPQ2d 1134, 1146- |
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(26) That defendant's mark is generic. [ Note 39.] A mark registered on the Supplemental Register is subject to cancellation on the basis that it is generic. [ Note 40.] |
39. See H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 531- See also International Dairy Foods Association v. Interprofession du Gruyère, 2020 USPQ2d 10892 (TTAB 2020) (proposed mark GRUYERE found generic for identified goods), aff'd F. Supp.3d 2021 WL 6286234 (E.D. Va. Dec. 15, 2021), appeal docketed, No. 22- But see USPTO v. Booking.com B.V., 591 U.S. ___, 140 S.Ct. 2298, 2020 USPQ2d 10729 (2020) (BOOKING.COM not generic for online hotel reservation services); Luxco, Inc. v. Consejo Reglador del Tequila, A.C., 121 USPQ2d 1477, 1497 (TTAB 2017) (opposition dismissed for failure to prove that TEQUILA is generic as a certification mark for spirits distilled from agave plant). 40. Turtle Wax, Inc. v. Blue Coral, Inc., 2 USPQ2d 1534, 1536 (TTAB 1987) (generic designations precluded from Supplemental Register). |
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(27) That defendant's mark is not in lawful use in commerce where the provision of the identified goods and/or services is unlawful under federal law. [ Note 41.] |
41. See, e.g., Stawski v. Lawson, 129 USPQ2d 1036, 1048- |
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(28) That defendant in a cancellation proceeding has never used the mark in commerce on or in connection with some or all of the goods or services recited in the registration. [ Note 42.] |
42. Trademark Act § 14(6), 15 U.S.C. § 1064(6). See TBMP §307.03. |
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