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-Trademark Trial and Appeal Board) require each party (plaintiff and defendant or applicant and opposer or registrant and petitioner) to follow strict rules, meet multiple deadlines, and pay necessary filing fees. In addition, oppositions and cancellations have additional rules and trademark opposition timelines that are similar to those used in federal courts. Hiring an attorney with experience appearing before the Board is strongly recommended by the USPTO. See https://www.uspto.gov/learning-and-resources/uspto-videos/trademarks/tm-newsflash-13-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-most column. Click on a proceeding number to select a proceeding. Proceedings that start with a 92 are cancellation proceedings and proceedings that start with a 91 are opposition proceedings.  (Proceedings that start with 8 are appeals or extensions of time to oppose.) At the bottom of the page for each individual search result for any  opposition or cancellation proceeding, document #1 (click on FILED AND FEE or the number ‘1’) is the opening pleading or the Notice of Opposition (opposition) or Petition for Cancellation (cancellation).

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-day testimony period for the plaintiff to present its case in chief, a 30-day testimony period for the defendant to present its case and to meet the case of the plaintiff, and a 15-day testimony period for the plaintiff to present rebuttal evidence. [ Note 2.] The plaintiff's period for presenting its case in chief is scheduled to open 60 days after the close of the discovery period; the defendant's testimony period is scheduled to open 30 days after the close of the plaintiff's testimony period in chief; and the plaintiff's rebuttal testimony period is scheduled to open 30 days after the close of the defendant's testimony period. [ Note 3.] The trial order also schedules the time for pretrial disclosures of witnesses: each party must make pretrial disclosures no later than fifteen days prior to the opening of its testimony period. [ Note 4.]


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-day interval, and from each other by 30-day intervals. [ Note 5.] In an interference or concurrent use proceeding, a junior party is in the position of plaintiff and a senior party is in the position of defendant. [ Note 6.] See TBMP § 1005, TBMP § 1007 and TBMP § 1108.


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-day interval between each testimony period), aff'd, 685 F.2d 302, 216 USPQ 480 (9th Cir. 1982).


 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-Tek Inc. v. CVP Systems Inc., 17 USPQ2d 1070, 1072 (TTAB 1990) (untimely deposition stricken); Maytag Co. v. Luskin's, Inc., 228 USPQ 747, 747 n.4 (TTAB 1986) (opposer's discovery deposition of non-party witness treated as testimony deposition taken by stipulation prior to trial); Fischer GmbH. v. Molnar & Co., 203 USPQ 861, 867 (TTAB 1979) (discovery deposition of non-party inadmissible as evidence under a notice of reliance filed by one party without express or implied consent of adverse party; should have taken deposition during trial period or at least moved to take trial testimony prior to assigned testimony period). Cf. Apollo Medical Extrusion Technologies, Inc. v. Medical Extrusion Technologies, Inc., 123 USPQ2d 1844, 1847-48 (TTAB 2017) (rebuttal testimony not submitted with opposer’s case-in-chief admissible because directed to evidence submitted during applicant’s testimony period), on appeal, 3:17-CV-02150 (S.D. Cal. October 19, 2017); Of Counsel Inc. v. Strictly of Counsel Chartered, 21 USPQ2d 1555, 1556 n.2 (TTAB 1991) (where opposer's testimony deposition was taken two days prior to the opening of opposer's testimony period, but applicant first raised an untimeliness objection in its brief on the case, objection held waived, since the premature taking of the deposition could have been corrected on seasonable objection).


 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-Football Inc., 45 USPQ2d 1789, 1790 (TTAB 1998) (motion to reopen to submit new evidence denied); Pumpkin Ltd v. The Seed Corps, 43 USPQ2d 1582, 1588 (TTAB 1997) (motion to reopen filed over three months after close of testimony period, due to a docketing error, denied).


 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]


  1.  Petition to Cancel is filed by Plaintiff  (see suggested format for cancellation)
  2.  Defendant (registrant) Answers within 40 days
  3.  Discovery Conference between parties (the parties are required to conference in person, by telephone, or by any other means on which they may agree)
  4.  Discovery Opens
  5.  Initial Disclosures Due
  6.  Expert Disclosures Due
  7.  Discovery Closes
  8.  Plaintiff's Pretrial Disclosures
  9.  Plaintiff's 30-day Trial Period-Brief on the Merits submitted
  10.  Defendant's Pretrial Disclosures
  11.  Defendant's 30-day Trial Period-Rebuttal on Brief on the Merits submitted
  12.  Plaintiff's Rebuttal Disclosures
  13.  Plaintiff's 15-day Rebuttal Period
  14. Plaintiff’s Brief
  15. Defendant’s Brief
  16. Plaintiff’s Reply Brief (if filed)
  17.  Board's Decision


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.

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, 1691-95 (Fed. Cir. 2018) (Board improperly broadened analysis of third-party use to encompass third-party marks on clearly dissimilar goods and improperly discounted certain evidence of fame); First Niagara Insurance Brokers Inc. v. First Niagara Financial Group Inc., 476 F.3d 867, 81 USPQ2d 1375, 1378 (Fed. Cir. 2007) (claim of prior intrastate use); Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, 2020 USPQ2d 10914 (TTAB 2020) (likelihood of confusion claim sustained, in part, dismissed, in part); Sock It To Me, Inc. v. Aiping Fan, 2020 USPQ2d 10611 (TTAB 2020) (likelihood of confusion claim dismissed); New Era Cap Co., Inc. v. Pro Era, LLC, 2020 USPQ2d 10596 (TTAB 2020) (likelihood of confusion claim sustained as to identified goods notwithstanding that plaintiff did not demonstrate family of marks); Moke America LLC v. Moke USA, LLC, 2020 USPQ2d 10400 (TTAB 2020) (likelihood of confusion claim dismissed for failure to prove priority of use), appeal filed, No. 3:20-CV-0040 (E.D. Va, June 5, 2020); Shannon DeVivo v. Celeste Ortiz, 2020 USPQ2d 10153 (TTAB 2020) (likelihood of confusion claim sustained); Ricardo Media Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355, at *8-9 (TTAB 2019) (Board declined to apply doctrine of foreign equivalents to given names and found marks dissimilar); Primrose Retirement Communities, LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1040 (TTAB 2016) (dismissing opposition; third party evidence demonstrates weakness of mark); Wise F&I, LLC; et al. v. Allstate Insurance Co., 120 USPQ2d 1103, 1109 (TTAB 2016) (family of marks may have different owners if there is unity of control); Brown Shoe Co. v. Robbins, 90 USPQ2d 1752, 1756 (TTAB 2009) (doctrine of foreign equivalents inapplicable but likelihood of confusion found); Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1023 (TTAB 2009) (earliest date respondent may rely upon is the filing date of its underlying application in absence of evidence of earlier use; petitioner must show earlier common law use in absence of registration); Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1593 (TTAB 2008) (dissimilarity of marks controlling issue in likelihood of confusion analysis); Apple Computer v. TVNET.net Inc., 90 USPQ2d 1393 (TTAB 2007); Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1959 (TTAB 2008) (although opposer failed to make its registrations of record, its burden is to demonstrate that it owns a trademark, which was used prior to applicant’s mark, and not abandoned); Black & Decker Corp. v. Emerson Electric Co., 84 USPQ2d 1482, 1490 (TTAB 2007) (family of marks); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1107 (TTAB 2007) (determination of likelihood of confusion based on an analysis of all facts in evidence); Christian Broadcasting Network Inc. v. ABS-CBN International, 84 USPQ2d 1560, 1565 (TTAB 2007) (several factors considered); Fort James Operating Co. v. Royal Paper Converting Inc., 83 USPQ2d 1624 (TTAB 2007) (design marks compared); Miss Universe L.P., v. Community Marketing, Inc., 82 USPQ2d 1562, 1566 (TTAB 2007) ("Our likelihood of confusion determination under Section 2(d) is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue (the du Pont factors)"); and Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1113 (TTAB 2007) (doubt resolved in favor of prior user).


(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, 1722-23 (Fed. Cir. 2001) (deceptive misdescriptiveness); City of London Distillery, Ltd. v. Hayman Group Ltd., 2020 USPQ2d 11487 (TTAB 2020) (mere descriptiveness); Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, 2020 USPQ2d 10914 (TTAB 2020) (mere descriptiveness claim dismissed); Callaway Vineyard & Winery v. Endsley Capital Group, Inc., 63 USPQ2d 1919, 1922-23 (TTAB 2002) (mere descriptiveness).


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-Lay North America, Inc., 906 F.3d 965, 128 USPQ2d 1370, 1377-79 (Fed. Cir. 2018) (explaining burdens of opposer and applicant in connection with Trademark Act § 2(f) claim; substantial evidence supports finding marks lack acquired distinctiveness); Schlafly v. Saint Louis Brewery, LLC, 909 F.3d 420, 128 USPQ.2d 1739, 1743 (Fed. Cir. 2018) (whether the surname had acquired distinctiveness); Cold War Museum Inc. v. Cold War Air Museum Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009) (in cancellation proceeding, presumption of validity of registration under Trademark Act § 2(f) includes presumption of acquired distinctiveness, and party seeking cancellation must overcome this presumption by preponderance of evidence; "burden" to prove that mark has acquired distinctiveness shifts to registrant only after plaintiff establishes prima facie case that mark has not acquired distinctiveness); Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988) (in opposing a claim under Trademark Act § 2(f), opposer has initial burden of challenging or rebutting applicant’s evidence of distinctiveness); Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1764-1767 (TTAB 2013) (burden on petitioner to rebut presumption that mark registered under Section 2(f) has acquired distinctiveness), aff’d , 565 F. App’x 900 (Fed. Cir. 2014) (mem.); Target Brands Inc. v. Hughes, 85 USPQ2d 1676, 1680 (TTAB 2007) (ultimate burden of persuasion under Trademark Act § 2(f) rests with applicant); Kellogg Co. v. General Mills Inc., 82 USPQ2d 1766, 1768 (TTAB 2007) (mere descriptiveness; whether claim under Trademark Act § 2(f) is sufficient).


 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, *12-13 (TTAB 2020) (applicant did not meet burden of showing acquired distinctiveness, and term is primarily geographically descriptive); Grand Canyon West Ranch LLC v. Hualapai Tribe, 88 USPQ2d 1501, 1504 (TTAB 2008) (whether mark is descriptive and/or primarily geographically descriptive, applicant has shown acquired distinctiveness); University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385 (TTAB 1994). Cf. Caymus Vineyards v. Caymus Medical Inc., 107 USPQ2d 1519, 1524-25 (TTAB 2013) (assertion that a registration is not entitled to Section 15 incontestability because of alleged fraud in obtaining and maintaining the registration does not state a valid ground for cancellation of a registration that is more than five years old on the basis that the registered mark is primarily geographically descriptive).


 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, 1781-82 (Fed. Cir. 2001) (describing § 2(e)(3) analysis); Corporacion Habanos SA v. Guantanamera Cigars Co., 102 USPQ2d 1085, 1090-91 (TTAB 2012) (reopened for the limited purpose of having the parties address whether a significant portion of the relevant consumers would be materially influenced to purchase the goods by the geographic meaning of the mark), on remand from, 729 F. Supp. 2d 246, 98 USPQ2d 1078 (D.D.C. 2010) (remanding on third factor of the test for determining whether a mark is primarily geographically deceptively misdescriptive); Corporacion Habanos SA v. Rodriquez, 99 USPQ2d 1873, 1876 (TTAB 2011) (primarily geographically deceptively misdescriptive sufficiently pleaded); Corporacion Habanos S.A. v. Anncas Inc., 88 USPQ2d 1785, 1790-91 (TTAB 2008) (primarily geographically deceptively misdescriptive and deceptive claims); United States Playing Card Co., v. Harbro, LLC, 81 USPQ2d 1537, 1541 (TTAB 2006) (addressing deceptiveness of a geographic term).


 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, 391-92 (TTAB 1979); Food Specialty Co. v. Carnation Co., 170 USPQ 522, 523 (TTAB 1971). Cf. In re Rath, 402 F.3d 1207, 74 USPQ2d 1174, 1174-75 (Fed. Cir. 2005) ("Section 44 applications are subject to the section 2 bars to registration, of which the surname rule is one."); In re tapio GmbH, 2020 USPQ2d 11387 (TTAB 2020); In re Integrated Embedded, 120 USPQ2d 1504, 1516 (TTAB 2016); In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1283 (TTAB 2016); In re Adlon Brand GmbH, 120 USPQ2d 1717, 1725 (TTAB 2016); In re Piano Factory Group Inc., 85 USPQ2d 1522, 1526-27 (TTAB 2007) (surname plus "& SONS" refused as "primarily a surname"). See also Schlafly v. Saint Louis Brewery, LLC, 909 F.3d 420, 128 USPQ.2d 1739, 1743 (Fed. Cir. 2018) (whether the surname had acquired distinctiveness).


 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-Norwich Products Inc., 671 F.2d 1332, 213 USPQ 9, 15-16 (CCPA) for factors considered in determining functionality); McGowen Precision Barrels, LLC v. Proof Research, Inc., 2021 USPQ2d 559, at *65 (TTAB 2021) (design of gun barrel de jure functional based on evidence of utility patent and manufacturing process); Grote Industries, Inc. v. Truck-Lite Co., LLC, 126 USPQ2d 1197, 1210-11 (TTAB 2018) (product design, pattern for truck lights, not functional; prima facie case of aesthetic functionality not established), judgment rev’d and vacated by consent decree, No. 1:18-cv-00599 (W.D.N.Y. June 8, 2022); AS Holdings, Inc. v. H & C Milcor, Inc., 107 USPQ2d 1829, 1833 (TTAB 2013) (overall design of product configuration dictated by utilitarian concerns and as a whole is functional); Doyle v. Al Johnson’s Swedish Restaurant & Butik Inc., 101 USPQ2d 1780, 1783-84 (TTAB 2012) (petitioner failed to relate claim of functionality of goats on a roof to respondent’s restaurant and gift shop services); Kistner Concrete Products Inc. v. Contech Arch Technologies Inc., 97 USPQ2d 1912, 1918-19 (TTAB 2011) (registration on Supplemental Register for a precast concrete bridge unit); and M-5 Steel Manufacturing Inc. v. O’Hagin’s Inc., 61 USPQ2d 1086 (TTAB 2001) (product design for roof vents). Cf. ERBE Elektromedizin GmbH v. Canady Technology LLC, 629 F.3d 1278, 97 USPQ2d 1048, 1056-58 (Fed. Cir. 2010) (same legal principles apply to a determination of functionality whether on the Principal Register or Supplemental Register); Duramax Marine, LLC v. R.W. Fernstrum & Co., 80 USPQ2d 1780, 1794 (TTAB 2006) (prohibition on the registration of functional marks does not extend to registration of two-dimensional design mark for custom manufacturing services).


(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-Swiss Inc. v. Swiss Army Brands Inc., 58 USPQ2d 1540, 1543 (TTAB 2001) (can be cancelled if a registrant, through its own actions, causes its mark to become geographically deceptive subsequent to the issuance of the registration).


 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-factor test for Section 2(a) claims); University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co. Inc., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.1983); U.S. Olympic Committee v. Tempting Brands Netherlands B.V., 2021 USPQ2d 164, at *33 (TTAB 2021 (claim of false suggestion of a connection fails as plaintiff cannot show the mark points uniquely and unmistakably to it); The Pierce-Arrow Society v. Spintek Filtration, Inc., 2019 USPQ2d 471774, at *7 (TTAB 2019) (same), appeal dismissed, No. 20-1068 (Fed. Cir. Nov. 13, 2019); Boston Red Sox Baseball Club L.P. v. Sherman, 88 USPQ2d 1581, 1593 (TTAB 2008) (false suggestion of a connection found); Internet Inc. v. Corporation for National Research Initiatives, 38 USPQ2d 1435, 1436-37 (TTAB 1996) (motion to dismiss false suggestion of a connection claim granted); Greyhound Corp. v. Both Worlds Inc., 6 USPQ2d 1635, 1639-40 (TTAB 1988) (disparagement of opposer found under 2(a)); Buffett v. Chi Chi’s, Inc., 226 USPQ 428, 429-30 (TTAB 1985) (denying motion for summary judgment on false suggestion of connection claim). See also Nike, Inc. v. Palm Beach Crossfit, Inc., 116 USPQ2d 1025, 1031-32 (TTAB 2015) (insufficiently pleaded claim where no assertion that public would recognize applicant’s mark as pointing uniquely to opposer).


 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).


(4) That there was no bona fide use of defendant’s mark in commerce prior to the filing of the use-based application for its registration under Trademark Act § 1(a), 15 U.S.C. § 1051(a), or for a Trademark Act § 1(b), 15 U.S.C. § 1051(b) application, within the expiration of the time for filing a statement of use. [ Note 15.]

 15.   See, e.g., Lens.com Inc. v. 1-800 Contacts Inc., 686 F.3d 1376, 103 USPQ2d 1672, 1676-77 (Fed. Cir. 2012) (software that is merely a conduit through which online retail services are rendered is not "in use in commerce" in association with software); Aycock Engineering Inc. v. Airflite Inc., 560 F.3d 1350, 90 USPQ2d 1301, 1305 (Fed. Cir. 2009) (registration of a mark that does not meet the use requirement is void ab initio); International Mobile Machines Corp. v. International Telephone and Telegraph Corp., 800 F.2d 1118, 231 USPQ 142, 143 (Fed. Cir. 1986) ("An initial commercial transaction is sufficient to support the validity of a registration so long as the initial transaction is not a sham transaction and is followed by a continuing effort or intent to engage in commercial use."); Avakoff v. Southern Pacific Co., 765 F.2d 1097, 226 USPQ 435, 436 (Fed. Cir. 1985) (shipment to owner of mark by manufacturer, advertising in the nature of form letter solicitation to retailers, and subsequent sales insufficient to constitute use in commerce for applicant); Toys, Inc. v. McDonald's Corp., 585 F.2d 1067, 199 USPQ 722, 723 (CCPA 1978) (because applicant did not use the mark in commerce in association with the goods at the time it filed the application, its application was void); Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1769 (TTAB 1994) ("use in commerce" involves the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark), aff’d unpub’d, 108 F.3d 1392 (Fed. Cir. 1997).


For TTAB cases, see, e.g., NT-MDT LLC v. Kozodaeva, 2021 USPQ2d 433, at *29-30 (TTAB 2021) (respondent failed to demonstrate, through clear and convincing evidence, use of mark prior to the claimed date of first use as a successor-in-interest); Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1051-1055 (TTAB 2017) (claim of nonuse at time of filing statement of use); Ashland Licensing & Intellectual Property LLC v. Sunpoint International Group USA Corp., 119 USPQ2d 1125, 1131 (TTAB 2016) (any legally sufficient nonuse claim must plead that Respondent failed to use its mark in commerce by the expiration of the time for filing a statement of use in each application); Embarcadero Technologies, Inc. v. Delphix Corp., 117 USPQ2d 1518, 1524 (TTAB 2016) (where applicant filed an "insurance extension," sufficient pleading of nonuse is that Respondent did not use the mark with the goods in the registration within the time for filing its statement of use as extended); United Global Media Group, Inc. v. Tseng, 112 USPQ2d 1039, 1044-46 (TTAB 2014) (application void ab initio for nonuse in connection with services); Dragon Bleu (SARL) v. VENM, LLC, 112 USPQ2d 1925, 1929-30 (TTAB 2014) (claim of nonuse at time of filing for § 66(a) application legally insufficient for registration based on § 66(a) because time of nonuse begins from the date of registration); City National Bank v. OPGI Management GP Inc./Gestion OPGI Inc., 106 USPQ2d 1668, 1676-78 (TTAB 2013) (internal use of mark by applicant did not constitute use in commerce); Clorox Co. v. Salazar, 108 USPQ2d 1083, 1086-87 (TTAB 2013) (applicant’s mark not in use in commerce as of the filing date of the use-based application); ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036, 1045 (TTAB 2012) (respondent’s mark not in use in commerce at time of filing of his use-based application); Nutrasweet Co. v. K & S Foods Inc., 4 USPQ2d 1964, 1966 (TTAB 1987) (single shipment of the product from one corporate officer to another was an intracompany transaction done solely for the purpose of qualifying for registration, and was a sham; no use in commerce prior to filing date of application found); Pennwalt Corp. v. Sentry Chemical Co., 219 USPQ 542, 550 (TTAB 1983) (nonuse in commerce based on experimental shipment not available ground for registration over five years old); Bonaventure Associates v. Westin Hotel Co., 218 USPQ 537, 543-45 (TTAB 1983) (opposer’s construction and golf club services for a vacation home residential community not inherently incapable of use in commerce).

See also Grand Canyon West Ranch LLC v. Hualapai Tribe, 78 USPQ2d 1696, 1697-98 (TTAB 2006) (explaining the distinction between nonuse on some or all of the goods or services; application not treated as void in connection with a claim asserting nonuse as to some of the goods or services).

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).


(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, 1471-77 (TTAB 2013) (documentary evidence, testimony and other record evidence do not support applicant’s claimed bona fide intent to use); Kelly Servs., Inc. v. Creative Harbor, LLC, 846 F.3d 857, 121 USPQ2d 1357, 1369-70 (6th Cir. 2017) (applying Board precedential decisions and affirming district court determination that applicant lacked a bona fide intent to use its mark as to some, but not all the goods listed in its applications, but vacating the judgment to the extent that applicant’s applications were voided in their entirety); Monster Energy Co. v. Tom & Martha LLC, 2021 USPQ2d 1197, at *12 (TTAB 2021) (if lack of bona fide intent is found as to some, but not all, goods or services, the former is subject to deletion from the application, but absent proof of fraud, the application or relevant class would not be considered void in its entirety); Hole In 1 Drinks, Inc. v. Lajtay, 2020 USPQ2d 10020, at *10 (TTAB 2020) (underlying application void ab initio where individual registrant, at the time application was filed, lacked a bona fide intent to use the mark alone); A&H Sportswear Co. v. Yedor, 2019 USPQ2d 111513, at *6 (TTAB 2019) (lack of a bona fide intent to use found where only document not sufficiently contemporaneous with filing of application); Swiss Grill Ltd. v. Wolf Steel Ltd., 115 USPQ2d 2001, 2008-09 (TTAB 2015) (lack of bona fide intent to use found where no documentary evidence predated application filing date); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1443 (TTAB 2012) (lack of a bona fide intent to use found where there was no documentary evidence, affirmative statement that no documents exist, no industry experience, no development or business plan, vague allusions to using the mark through licensing or outsourcing, and applicant’s demonstrated pattern of filing intent-to-use applications for disparate goods under the well-known and famous marks of others); Spirits International B.V. v. S. S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 USPQ2d 1545, 1548-49 (TTAB 2011) (lack of a bona fide intent to use found where there was no documentary evidence, an affirmative statement that no such documents exist, and no other evidence to explain lack of documentary evidence); SmithKline Beecham Corp. v. Omnisource DDS LLS, 97 USPQ2d 1300, 1304-05 (TTAB 2010) (lack of a bona fide intent to use; no documentary evidence; record devoid of any other evidence of intended use); Honda Motor Co. v. Friedrich Winkelmann, 90 USPQ2d 1660 (TTAB 2009) (lack of bona fide intent to use); Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1587 (TTAB 2008) (lack of bona fide intent to use); Lane Ltd. v. Jackson International Trading Co., 33 USPQ2d 1351, 1352 (TTAB 1994); Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1504 (TTAB 1993).


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).


(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. 84-517 (Fed. Cir. 1984). See also In re Grande Cheese Co., 2 USPQ2d 1447, 1449 (TTAB 1986).


(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-family license with informal control sufficient to qualify licensee as related company); Wonderbread 5 v. Gilles, 115 USPQ2d 1296, 1304-07 (TTAB 2015) (facts inconsistent with individual former band member’s claim that he was the owner the mark); UVeritech, Inc. v. Amax Lighting, Inc., 115 USPQ2d 1242, 1249 (TTAB 2015) (presumption that a manufacturer is the owner of a disputed mark may be rebutted); Conolty v. Conolty O’Connor NYC LLC, 111 USPQ2d 1302 (TTAB 2014) (ownership claim determined under accelerated case resolution); Nahshin v. Product Source International LLC, 107 USPQ2d 1257 (TTAB 2013); Anheuser-Busch Inc. v. The Florists Association of Greater Cleveland Inc., 29 USPQ2d 1146 (TTAB 1993); Kemin Industries, Inc. v. Watkins Products, Inc., 192 USPQ 327, 328 (TTAB 1976). Cf., e.g., Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993) (where opposer was asserting that applicant’s mark is a descriptive term which cannot be owned exclusively by anyone, rather than alleging that someone other than applicant is the owner of the term as a mark) recon. den., 36 USPQ2d 1328 (TTAB 1994).


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).


(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-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417, (Fed. Cir. 1985); Goodyear Tire & Rubber Co. v. Vogue Tyre & Rubber Co., 47 USPQ2d 1748 (TTAB 1998); Kassnar Imports v. Plastilite Corp., 180 USPQ 156, 157 (TTAB 1973), aff’d, 508 F.2d 824, 184 USPQ 348, 350 (CCPA 1975).


(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).


(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-Mart Stores, Inc. v. Samara Brothers, 529 U.S. 205, 54 USPQ2d 1065, 1069 (2000) (product design can never be inherently distinctive and requires showing of acquired distinctiveness); AS Holdings, Inc. v. H & C Milcor, Inc., 107 USPQ2d 1829, 1839 (TTAB 2013) (product configuration of pipe boot design has not acquired distinctiveness); Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549 (TTAB 2009) (product configuration). Cf. In re MK Diamond Products, Inc., 2020 USPQ2d 10882 (TTAB 2020) (product configuration of a saw blade found non-distinctive and not having acquired distinctiveness).


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-part test from Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 196 USPQ 289, 291 (CCPA 1977) to determine if trade dress packaging is inherently distinctive, or requires showing of acquired distinctiveness).


(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. 40-0, LLC, 2021 USPQ2d 253, at *33 (TTAB 2021) (40-0 fails to function as a mark because it is merely informational); D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1716 (TTAB 2016) (I ♥ DC fails to function as a mark). Cf. In re Maugus Manufacturing, Inc,, 2021 USPQ2d 1100 (TTAB 2021) (DRINK MORE BEER fails to function as a mark because it is seen as an example of how wording would appear on goods); In re Team Jesus LLC, 2020 USPQ2d 11489 (TTAB 2020) (TEAM JESUS fails to function as a mark); In re Greenwood, 2020 USPQ2d 11439 (TTAB 2020) (GOD BLESS THE USA fails to function as a mark); In re Vox Populi Registry Ltd., 2020 USPQ2d 11289 (TTAB 2020) (designation .SUCKS fails to function as a mark; found to be merely a generic top-level domain ("gTLD")), aff;d 2002USPQ2d 115 (Fed. Cir. 2022); In re Mayweather Promotions, LLC, 2020 USPQ2d 11298 (TTAB 2020) (proposed mark TEXAS LOVE fails to function as a mark because it constitutes a widely used concept or sentiment); In re AC Webconnecting Holding B.V., 2020 USPQ2d 11048 (TTAB 2020) (the proposed mark .CAM incapable of functioning as a mark for some of the identified services).


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-Busch Inc. v. The Florists Association of Greater Cleveland, Inc., 29 USPQ2d 1146, 1160 (TTAB 1993) (allegation that slogan was used as mere advertising and not as a trademark); Marshall Field & Co. v. Mrs. Fields Cookies, 11 USPQ2d 1355 (TTAB 1989).


(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-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812-13 (Fed. Cir. 2001); In re International Flavors & Fragrances Inc., 47 USPQ2d 1314 (TTAB 1998), aff’d, 183 F.3d 1361, 51 USPQ2d 1513 (Fed. Cir. 1999).


(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 *16-17 (TTAB 2020) (plaintiff failed to prove abandonment of defendant’s mark because defendant was able to demonstrate that it maintained an intent to resume use of its mark throughout the period of nonuse); Lewis Silkin LLP v. Firebrand LLC, 129 USPQ2d 1015, 1020 (TTAB 2018) (discussing pleading requirements for a legally sufficient claim of abandonment); City National Bank v. OPGI Management GP Inc./Gestion OPGI Inc., 106 USPQ2d 1676-79 (TTAB 2013) (abandonment of a registration under Trademark Act § 44(e), 15 U.S.C. § 1126(e), based on over three years of nonuse where respondent did not use mark with recited services since at least the issuance date of the involved registration and where the nature of the use shown by respondent did not constitute use in commerce); ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036 (TTAB 2012) (more than three years of nonuse, commencing with filing date for majority of the identified goods, and no evidence rebutting prima facie showing); Auburn Farms, Inc. v. McKee Foods Corp., 51 USPQ2d 1439 (TTAB 1998).


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, 1550-52 (TTAB 2012) (claim of abandonment is available with respect to a claim against a § 66(a) registration, which is a registered extension of protection under 15 U.S.C. § 1141f(a)).

 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, 1133-34 (Fed. Cir. 2015) (no abandonment found where it was found that consumers would not view stylistic modifications as a different mark, resulting in the same continuing commercial impression), cert. denied, No. 15-660 (Jan. 25, 2016); Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, (TTAB 2009) (failure to police third party use of marks); Tea Board of India v. The Republic of Tea, Inc., 80 USPQ2d 1881 (TTAB 2006); Woodstock’s Enterprises Inc. v. Woodstock’s Enterprises Inc., 43 USPQ2d 1440 (TTAB 1997), aff’d mem., 152 F.3d 942 (Fed. Cir. Mar. 5, 1998).


(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. 2007-1364 (Fed. Cir. Dec. 7, 2007); Nike, Inc. v. Palm Beach Crossfit, Inc., 116 USPQ2d 1025, 1032-33 (TTAB 2015) (claim insufficiently pleaded where no assertion that licensing relationship gave opposer a proprietary right to assert the claim on behalf of third party); Ross v. Analytical Technology, Inc., 51 USPQ2d 1269 (TTAB 1999) (plaintiff must establish that the "name," as used on the goods or services, points uniquely to plaintiff as a "particular living individual"); Ceccato v. Manifattura Lane Gaetano Marzotto & Figli S.p.A., 32 USPQ2d 1192, 1195 (TTAB 1994) (party asserting Trademark Act § 2(c), 15 U.S.C. § 1052(c) ground must have cognizable or proprietary right in the name). Cf. Societe Civile Des Domaines Dourthe Freres v. S.A. Consortium Vinicole De Bordeaux Et De La Gironde, 6 USPQ2d 1205, 1209 (TTAB 1988) (Trademark Act § 2(c), 15 U.S.C. § 1052(c) does not apply to family surnames).


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").


(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).


(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, 1509-10 (TTAB 2015) (parody defense will not be considered as part of the assessment of a dilution claim; whether an applicant’s mark is registrable because it is being used in commerce to indicate source is counter to whether such use is noncommercial or fair use); McDonald’s Corp. v. McSweet LLC, 112 USPQ2d 1268, 1286 (TTAB 2014) (dilution also applies to family of marks); Chanel, Inc. v. Makarczyk, 110 USPQ2d 2013, 2023-24 (TTAB 2014) (dilution by blurring, opposer may rely on applicant’s filing (constructive use) date to satisfy second prong of test); Research in Motion Limited v. Defining Presence Marketing Group Inc., 102 USPQ2d 1187 (TTAB 2012) (full analysis of factors finding dilution by blurring); Rolex Watch U.S.A. Inc. v. AFP Imaging Corp., 101 USPQ2d 1188, 1191-97 (TTAB 2011) (same), judgment vacated based on action of defendant on appeal, 107 USPQ2d 1626 (TTAB 2013); UMG Recordings Inc. v. Mattel Inc., 100 USPQ2d 1868, 1886-90 (TTAB 2011) (same); Nike Inc. v. Maher, 100 USPQ2d 1018 (TTAB 2011) (same); National Pork Board and National Pork Producers Council v. Supreme Lobster and Seafood Co., 96 USPQ2d 1479 (TTAB 2010) (commodity promotion slogan dilution by blurring); Coach Services, Inc. v. Triumph Learning LLC; 96 USPQ2d 1600 (TTAB 2010) (dilution by blurring and tarnishment), aff’d-in-part, rev’d-in-part and remanded on other grounds, 668 F.3d 1356, 101 USPQ2d 1713 (Fed. Cir. 2012); Citigroup Inc. v. Capital City Bank Group Inc., 94 USPQ2d 1645, 1649 (TTAB 2010) (party alleging fame must show that mark became famous before applicant’s use of challenged mark), aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011); Demon International LC v. Lynch, 86 USPQ2d 1058, 1059-60 (TTAB 2008) (dilution claim in pleading must include an allegation that opposer’s mark at issue is famous); Moseley v. V Secret Catalogue Inc., 537 US 418, 65 USPQ2d 1801 (2003); Enterprise Rent-A-Car Co. v. Advantage Rent-A-Car, Inc., 62 USPQ2d 1857 (TTAB 2002), aff’d, 300 F.3d 1333, 66 USPQ2d 1811 (Fed. Cir. 2003); Trek Bicycle Corp. v. StyleTrek Ltd., 64 USPQ2d 1540, 1542 (TTAB 2001) (dilution pleading legally insufficient where opposer failed to allege that its mark became famous before constructive use date of involved intent-to-use application); Toro Co. v. ToroHead, Inc., 61 USPQ2d 1164, 1174 n.9 (TTAB 2001); Polaris Industries Inc. v. DC Comics, 59 USPQ2d 1798 (TTAB 2000).


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).


(17) That defendant has used its mark so as to misrepresent the source of its goods or services. [ Note 30.]

 30.   See Coca-Cola Co. v. Meenaxi Enterprise, Inc., 2021 USPQ2d 709, at *51-52 (TTAB 2021) (not necessary for petitioner to establish prior use in the United States to prevail on misrepresentation of source claim; claim may be based on reputation in the United States, which is not recognition of the "famous marks" doctrine), appeal docketed, No. 21-2209 (Fed. Cir. Aug. 9, 2021); Bayer Consumer Care AG v. Belmora LLC, 90 USPQ2d 1587 (TTAB 2009) (motion to dismiss misrepresentation of source claim denied), on final decision, 110 USPQ2d 1623 (TTAB 2014) (petition granted on claim of misrepresentation), rev’d on other grounds, 84 F. Supp. 3d 490 (E.D. Va. 2015), vacated and remanded 819 F.3d 697 (4th Cir. 2016), cert denied, 137 S. Ct. 1202 (2017), aff’d on remand, 338 F. Supp.3d 1477 (E.D. Va. 2018), appeal filed, No. 18-2232 (4th Cir. Oct. 19, 2018); Otto International Inc. v. Otto Kern GmbH, 83 USPQ2d 1861, 1863 (TTAB 2007) (pleading of misrepresentation of source must be supported by allegations of blatant misuse of the mark by respondent in a manner calculated to trade on the goodwill and reputation of petitioner); The E.E. Dickinson Co. v. The T.N. Dickinson Co., 221 USPQ 713 (TTAB 1984) (petitioner allowed to go forward on claim of misrepresentation of source).


(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).


(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. 40-0, LLC, 2021 USPQ2d 253,at *21-22 (TTAB 2021) (misunderstanding requirements for use-based application is not proof of intent to deceive USPTO); Chutter, Inc. v. Great Management Group, LLC, 2021 USPQ2d 1001, at *13 (TTAB 2021) ("reckless disregard" satisfies the requisite intent for fraud claims), appeal docketed, No. 22-1212 (Fed. Cir. Dec. 2, 2021); Freki Corp. v. Pinnacle Entertainment, Inc., 126 USPQ2d 1697, 1703 (TTAB 2018) (fraud claim insufficiently pleaded); Daniel J. Quirk, Inc. v. Village Car Co., 120 USPQ2d 1146 (TTAB 2016) (fraud claim based on statements made in application oath dismissed); Nationstar Mortgage LLC v. Ahmad, 112 USPQ2d 1361 (TTAB 2014) (claim of fraud sustained); Dragon Bleu (SARL) v. VENM, LLC, 112 USPQ2d 1925, 1928 (TTAB 2014) (failure to state a claim of fraud because statements were not false, not material and no allegation regarding intent, no leave to replead as would be futile); Caymus Vineyards v. Caymus Medical Inc., 107 USPQ2d 1519, 1522-24 (TTAB 2013) (motion to dismiss denied where fraud claim sufficiently alleged); Meckatzer Löwenbräu Benedikt Weiß KG v. White Gold LLC, 95 USPQ2d 1185, 1187 (TTAB 2010) (motion to dismiss denied where fraud claim sufficiently pleaded); DaimlerChrysler Corp. v. American Motors Corp., 94 USPQ2d 1086 (TTAB 2010) (summary judgment on fraud claim denied); Enbridge, Inc. v. Excelerate Energy L.P., 92 USPQ2d 1537 (TTAB 2009).


See also Exergen Corp. v. Wal-Mart Stores Inc., 575 F.3d 1312, 91 USPQ2d 1656, 1670 (Fed. Cir. 2009) ("[P]leadings on information and belief require an allegation that the necessary information lies within the defendant’s control, and … such allegations must also be accompanied by a statement of the facts upon which the allegations are based") (citing Kowal v. MCI Communications Corp., 16 F.3d 1271, 1279 n.3 (D.C. Cir. 1994)); Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986); King Auto., Inc. v. Speedy Muffler King, Inc., 667 F.2d 1008, 212 USPQ 801, 803 (CCPA 1981) (fraud must be pleaded with particularity); Bart Schwartz International Textiles, Ltd. v. The Federal Trade Commission, 289 F.2d 665, 129 USPQ 258, 260 (CCPA 1961) ("[T]he obligation which the Lanham Act imposes on an applicant is that he will not make knowingly inaccurate or knowingly misleading statements in the verified declaration forming a part of the application for registration."); Smith International, Inc. v. Olin Corp., 209 USPQ 1033, 1044 (TTAB 1981) (fraud requires a willful intent to deceive); G&W Laboratories Inc. v. GW Pharma Ltd., 89 USPQ2d 1571, 1574 (TTAB 2009) (a finding of fraud as to one class in a multiple-class registration does not require cancellation of all classes in a registration); Grand Canyon West Ranch LLC v. Hualapai Tribe, 88 USPQ2d 1501, 1509 (TTAB 2008) (false claim of use of mark); Standard Knitting Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917 (TTAB 2006) (same).

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-Star Marketing LLC v. Nino Franco Spumanti S.R.L., 84 USPQ2d 1912, 1916 (TTAB 2007) (fraud not found where statement identifying goods in application, although inartfully worded, was not false).

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. 22-1212 (Fed. Cir. Dec. 2, 2021), held that "reckless disregard" satisfies the requisite intent for fraud claims. Accordingly, consideration of the holdings in cases involving fraud in a goods/services use statement pre-Bose and Chuttershould be reviewed under the standard for fraud as set forth in those cases, and not as set forth in the line of Board cases following the "knew or should have known" standard set forth in Medinol Ltd. v. Neuro Vasx, Inc., 67 USPQ2d 1205 (TTAB 2003).


(20) That defendant’s registered mark interferes with the registration of a foreign owner’s mark under Article 8 of the General Inter-American Convention for Trademark and Commercial Protection of Washington, 1929 ("Pan American Convention"), 46 Stat. 2907. [ Note 33.]

33.   See British-American Tobacco Co. v. Phillip Morris Inc., 55 USPQ2d 1585 (TTAB 2000). Cf. Diaz v. Servicios De Franquicia Pardo’s S.A.C., 83 USPQ2d 1320, 1322 (TTAB 2007) (Board has subject matter jurisdiction to entertain affirmative defense of priority pursuant to Article 7 of the Pan American Convention).

(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-way radios" entitled opposer to judgment with respect to those goods under principles of issue preclusion). Cf. Nasalok Coating Corp. v. Nylok Corp., 522 F.3d 1320, 86 USPQ2d 1369 (Fed. Cir. 2008) (cancellation petition barred by doctrine of "defendant preclusion"); NH Beach Pizza LLC v. Cristy's Pizza Inc., 119 USPQ2d 1861, 1863 (TTAB 2016) (issue preclusion may bar re-litigation of a standing determination made in a prior Board proceeding); Urock Network, LLC v. Sulpasso, 115 USPQ2d 1409, 1411-13 (TTAB 2015) (claim preclusion bars cancellation proceeding in view of earlier opposition proceeding which was dismissed for failure of plaintiff to submit any evidence in support of its case; and where plaintiff in cancellation concedes it is same as plaintiff in opposition); Stephen Slesinger Inc. v. Disney Enterprises Inc., 98 USPQ2d 1890 (TTAB 2011) (ownership of the marks at issue established in court proceeding; defendant entitled to summary judgment based on issue preclusion), aff’d, 702 F.3d 640, 105 USPQ2d 1472 (Fed. Cir. 2012), cert denied, 134 S. Ct. 125 (2013). See also Chutter, Inc. v. Great Concepts, LLC, 119 USPQ2d 1865, 1870 (TTAB 2016) (claim preclusion inapplicable because fraud claim based on different transactional facts, defendant’s motion for summary judgment denied);Zachry Infrastructure LLC v. American Infrastructure Inc., 101 USPQ2d 1249 (TTAB 2011) (no claim preclusion based on district court’s determination because civil action focused on respective uses and rights to use while Board proceeding focused on right to registration; issue preclusion based on district court determination found; no claim preclusion based on abandonments in related opposition because trademark owner allowed to make decision on which oppositions to defend).

(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, 1142-44 (TTAB 2011).

(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).

(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).

(25) That defendant's intent-to-use application was assigned or transferred in contravention of Trademark Act § 10; 15 U.S.C. § 1060. [ Note 38.]

  38.   See Central Garden & Pet Co. v. Doskocil Manufacturing Co., 108 USPQ2d 1134, 1146-50 (TTAB 2013); The Clorox Co. v. Chemical Bank, 40 USPQ2d 1098 (TTAB 1996).

(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, 531-32 (Fed. Cir. 1986) (two-step determination of whether a term is generic involves 1) what is the genus of the goods or services at issue and 2) is the term understood by the relevant public primarily to refer to that genus). Accord Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1046 (Fed. Cir. 2018) (explaining determinations to be made under second Marvin Ginn factor); Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1379 (Fed. Cir. 2018) (incorrect application of first Marvin Ginn factor); Princeton Vanguard, LLC v. Frito-Lay North America, Inc., 786 F.3d 960, 114 USPQ2d 1827, 1830-31 (Fed. Cir. 2015) (there is only one legal standard for genericness).


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. 22-1041 (4th Cir. Jan. 11, 2022); Milwaukee Electric Tool Corp. v. Freud America, Inc., 2019 USPQ2d 460354, at *17-18 (TTAB 2020) (color red is generic as used on saw blades), civil action filed, No. 1:20-CV-000902 (D. Del. July 2, 2020) (transferred from M.D.N.C.).

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).


(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, 1048-53 (TTAB 2018) (whether concurrent use applicant had lawful use in commerce within the meaning of the concurrent use proviso of Section 2(d)), appeal dismissed, No. 19-1617 (Fed. Cir. Dec 19, 2019). Cf. In re Stanley Brothers Social Enterprises LLC, 2020 USPQ2d 10658, at *15 (TTAB 2020) (finding applicant’s proposed mark’s use in commerce for the goods identified a per se violation of the Food, Drug & Cosmetics Act (FDCA) because Applicant’s goods contain cannabidiol (CBD), an extract of the cannabis plant, regulated under the FDCA as a drug); In re JJ206, LLC, 120 USPQ2d 1568, 1570 (TTAB 2016) (finding applicant’s use and intended use of the applied for marks on marijuana vaporizers unlawful because the goods constitute illegal drug paraphernalia under the Controlled Substances Act).

(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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