We recently spoke with Blake Knowles, principal partner at Spruson & Ferguson, to discuss how COVID-19 has impacted Australia trademark opposition and cancellation rules and procedures.

1.  Thank you for your time, Blake.  How has the COVID-19 pandemic impacted IP Australia’s policies and procedures regarding trademark oppositions, cancellations, and invalidations? 

IP Australia has facilitated remote working for some time now, and is well placed to continue operations during the current pandemic. IP Australia has indicated it will consider COVID-19 related disruptions when considering any request for an extension of deadlines (provided that such deadlines can be extended under Australian law). However, face to face hearings will not be conducted for the foreseeable future. This should not cause a major disruption as many hearings are now heard by telephone or video conference, or on the basis of written submissions only. Certain actions involving Plant Breeders Rights have also been suspended, such as submission of plant specimens to the Australian Cultivar Registration Authority, and examination of field trials that involve domestic flights or overnight stays.  For further information, see:

https://www.ipaustralia.gov.au/about-us/news-and-community/news/business-continuity-and-coronavirus-disease-covid-19-outbreak

2. Have you seen any changes in trademark enforcement activities in Australia over the past month due to COVID-19? 

There has been no noticeable change at this stage with regards to Australia trademark opposition and enforcement activities.  However, it is expected that some clients will defer taking action in relation to non-critical matters given the current health and economic situation. Australian trade mark filings have dropped through January-March relative to previous years by approximately 17% (Jan-March 2019 – 17,204 filings, Jan-March 2020 – 14,293 filings).

3.  When faced with COVID-19 business uncertainties, what can we as members of the international trademark community be doing to keep trademark enforcement efforts top of mind for our clients who wish to do business in Australia and elsewhere?

Firms should continue to keep clients abreast of developments in trademark law and recent trademark enforcement decisions, including by regular circulars and updates.

The current economic situation may encourage a higher rate of trademark infringement, as potential infringers assume that many companies will tighten their IP enforcement of their IP budget. It is important that such infringers be detected and dealt with early, before gaining any momentum in the marketplace.

Editor’s Note:  Participating authors of COVID-19 global trademark litigation updates are from a wide variety of firms, many of whom we know and others by reputation.  If you would like to contribute insight on trademark opposition developments in your own country, please contact us.

The U.S. Trademark Office has issued updated rules due to the ongoing coronavirus pandemic. The new rules are part of the Coronavirus Aid, Relief, and Economic Security Act (CARES Act).  These rules are in addition to those previously reported here.

CARES Act overview.   Section 12004 of the CARES Act may toll, waive, adjust, or modify and deadlines due to the coronavirus.  The relevant factors to determine whether such relief should be granted include if the coronavirus emergency:

  1.  materially affects the functioning of the Trademark Office;
  2.  materially affects the rights of applicants, registrants, trademark owners, and others appearing before the Trademark Office;
  3.  prevents applicants, registrants, trademark owners, and others from filing a document or fee with the Trademark Office

Deadlines eligible for relief.   The Director of the USPTO has determined that the coronavirus emergency has directly impacted the rights of individuals, companies, and law firms doing business before the Office.  It has also recognized that the virus has caused disruptions to businesses as well as law firms who represent clients in trademark matters.   Accordingly, a person who is unable to meet a trademark deadline due to COVID-19 may be eligible for waiver of certain due dates for:

  • responses to office actions;
  • statement of use or request to file an extension of time for a statement of use;
  • notice of opposition or request for extension of time to file a notice of opposition;
  • certain priority filing bases governed by statute;
  • affidavits of use or excusable nonuse; and
  • trademark renewal applications

Time period affected.   The relief outlined above applies to any deadlines that fall between March 27, 2020 and April 30, 2020.  Deadlines for this period will be extended for 30 days from the initial date it was due if accompanied by a statement that failure to act resulted from:

  • office closures
  • cash flow interruptions
  • inaccessibility to files
  • travel delays
  • personal or family illness

or similar circumstances that have materially interfered with deadlines or payments.

TTAB deadlines.   U.S. Trademark Trial and Appeal Board deadlines are not impacted by the above rules.  Instead, parties seeking relief may do so by filing a motion for extension of time or reopening of a date.  Such motions be accompanied by a statement that sets forth the reasons for the relief requested.

Should you require additional information regarding U.S. trademark office deadlines impacted by the coronavirus, please contact us.

The USPTO has issued a policy about the coronavirus and trademark deadlines.

According to the statement, the USPTO considers the effects of the Coronavirus to be an “extraordinary situation” within the meaning 37 CFR 1.183 and 37 CFR 2.146 for affected trademark owners.  While the new guidelines waive certain fees, they do not waive statutory deadline requirements.

Business before the USPTO.   Until further notice, all oral arguments before the U.S. Trademark Trial and Appeal Board and all other in-person interviews and other business before the USPTO are suspended.  In the alternative, hearings and interviews will be conducted by phone or videoconferencing.  Normal email communications with USPTO staff and other electronic filings will not be affected.

Trademark deadlines.  The following statutory trademark-related time periods are not extended and statutory fees are not waived:

  1.  the 36-month period set forth in 15 U.S.C. § 105l(d) within which a statement of use must be filed and the associated fee(s);
  2.  the periods set forth in 15 U.S.C. §§ 1058, 114 l(k) for filing affidavits of continued use or excusable nonuse and the associated fee(s);
  3.  the period set forth in 15 U.S.C. § 1059 for filing a renewal and the associated fees; and
  4.  the periods set forth in 15 U.S.C. §§ 1063 and 1064 for filing a trademark opposition or trademark cancellation proceeding

Reinstatement policy.   For trademark applications or registrations that have been cancelled or abandoned due to the Coronavirus, the USPTO will waive fees to revive the application or reinstate the registration.   This is because USPTO fees are set by regulations, not by statute, giving the USPTO direct authority to use its discretion.  In the above situations, the trademark owner must include a statement that the missed deadline was due to impacts of the coronavirus.  Such petitions to revive or reinstate must be made within two months after the issuance of the notice of trademark abandonment or trademark cancellation.

Handwritten signatures.  The USPTO has waived the requirement for original, handwritten signatures for certain correspondence with the Office of Enrollment and Discipline and certain payments by credit card.  In both situations, copies of handwritten signatures will be accepted.   The USPTO has no other requirements for handwritten signatures and electronic signatures for routine filings will continue to be accepted.

Bottom line:  Statutory filing deadlines are not waived due to the coronavirus outbreak.  In the case of trademark opposition or trademark cancellation matters that require an extension, parties are encouraged to seek consent from the adverse party.   If there is no consent, parties can still move the TTAB to extend or reopen certain dates based on existing regulatory standards of what constitutes “good cause” or “excusable neglect.”   Should you have any questions about these policies, please contact our office.

A recent trademark opposition found no likelihood of confusion between two apparel trademarks.

In Garan Incorporated and Garan Services Corp. v. Manimal LLC , the Opposer is the owner of the well-known GARANIMAL brand of children’s clothing.  The applicant sought registration of the mark MANIMAL for a wide variety of men’s women’s and children’s clothing, including shirts and pants.  In its notice of trademark opposition, the Opposer relied on eight trademark registrations for its GARANIMAL Mark.

In determining whether a likelihood of confusion existed between the parties’ marks, the Board compared the Opposer’s mark most similar to Applicant’s mark for in part identical goods.  This was Registration No. 0954125 of the mark GARANIMAL for “children’s shirts and pants.”   If the opposition could not be sustained based on this mark (which as closest in its identification of goods to the Applicant’s goods), then the opposition would not be successful for any of the other registrations.  The Board proceeded with its analysis of the likelihood of confusion factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973)  (the “DuPont factors.”).  Two key considerations are the similarity of the marks and similarity of goods.  In this case, the Board analyzed the similarity of the marks last.

  1.  Similarity of the goods.  It is sufficient for finding a likelihood of confusion that Opposers establish that any item encompassed by the identification of goods within a particular class in the application and registration are related.  Since the Applicant’s goods encompassed in part Opposer’s goods, this factor weighs in favor of the Opposer.
  2.  Similarity of channels of trade and class of consumers.  Because the goods described in the application and Opposers’ registration both encompass shirts and pants, they are therefore legally identical in part.  In such situations, the Board presumes that the channels of trade and classes of purchasers are the same.  This factor weighs in favor of the Opposer.
  3.  Length of time without actual confusion.  Here, the absence of any reported actual confusion was not highly persuasive because the Applicant’s use of its mark was not appreciable and continuous.  Moreover, since the use was not in the same markets, there was not a reasonable opportunity for confusion to occur.
  4.  Strength of opposer’s mark.  The fifth DuPont factor enables Opposers to expand the scope of protection afforded its pleaded mark by adducing evidence of the fame of its mark.  This is shown by sales, advertising, and length of use.  The sixth factor, which is related, affords Applicant the opportunity to restrict the Opposer’s evidence of strength by adducing evidence of the number and nature of similar marks on similar goods that already exist.  To determine strength (the fifth factor), the Board looks at the mark’s inherent strength based on the nature if the mark itself, and its commercial strength, based on its marketplace recognition.  The latter is analyzed at the point that the Opposer’s mark is asserted in litigation to prevent the Applicant’s use.   Here, the Board concluded that the GARANIMAL Mark was inherently distinctive and original for purposes of strength.  It further concluded that commercial sales of goods and advertising under the mark have been substantial since it was first introduced in 1972.
  5.  Similarity or dissimilarity of the marks.   This factor looks at the similarity of both marks in terms of sight, sound, and commercial impression.  Where, as here, the goods are similar, then the degree of similarity between the marks need not be as great for purposes of finding a likelihood of confusion.  Here, the Board found that the Applicant’s mark was sufficiently different than the Opposer’s in part because the Opposer placed the letter “m” before “animal” to create a combination of “man” and “animal.”  This together with third-party registrations of marks for apparel that contained the word “animal” made the Board conclude that the marks were dissimilar.

Conclusion:   In trademark opposition proceedings, one DuPont factor may be dispositive and outweigh all others.  This is particularly true when the factor is the similarity of dissimilarity of the parties’ marks.  Using this reasoning, the Board therefore concluded that there was no likelihood of confusion between Applicant’s MANIMAL mark for clothing with Opposer’s GARANIMAL mark for clothing.

 Key takeaway:  It is important to note that the Board is limited to the identification of goods set forth in the applicant and the Opposer’s registration in its comparison of certain DuPont Factors.  These factors are  the similarity of the goods, similarity of the channels of trade, and class of consumers.  It may not consider how the parties actually use their goods in the marketplace in assessing these factors.  The similarity of the marks and similarity of the goods factors are often given added weight over all others.

TTAB filing statistics for 2019 reveal an increase in contested proceedings combined with greater delays in rendering final decisions.

The data, made available by the U.S. Trademark Trial and Appeal Board, reflects an increase in activity by litigants in both trademark opposition and trademark cancellation proceedings.   Our 2018 summary is found here.  Relevant 2019 data compiled by the U.S. Trademark Trial and Appeal Board is below.  The numbers in parentheses reflect the rate of change over fiscal year 2018.

Oppositions  (+7.1%)

  • 2019:  6,955
  • 2018:  6,496

Cancellations  (+7. 7%)

  • 2019:  2,426
  • 2018:  2,253

Extensions of time to oppose  (+6.7%)

  • 2019:  20,502
  • 2018:  19,208

Appeals (+3.4%)

  • 2019:  3,333
  • 2018:  3,223

The increase in filing activity across all proceeding types has apparently placed a greater burden on TTAB staff resources.  This fact combined with a greater number of motions being contested has lead to greater delays in rendering decisions:

Number of decisions on motions issued (-7.4%)

  • 2019:  1002
  • 2018:  1082

Average pendency of decision (+17%)

  • 2019:  11.5 weeks
  • 2018:  9.4 weeks

No. cases with motions awaiting decision  (+46.7%)

  • 2019:  242
  • 2018:  165

With an increase in filings and contested motion practice, an increase in the number of matters awaiting final decision is not surprising.   Yet, the Board has been able to decide more cases in 2019 as compared to 2018 results:

Cases decided (11.3%)

  • 2019:  651
  • 2018:  585

Most notably, the average pendency of trial decisions (from the time a case is ready for decision until a written decision is rendered) has experienced significant delays:

Pendency of Trial Decisions (+61%)

  • 2019:  15.3 weeks
  • 2018:  9.5 weeks

The number of appeals and trial proceedings awaiting decision have also increased:

Awaiting decision at end of period  (+58.5%)

  • 2019:  206
  • 2018:  130

Conclusion.  While the TTAB’s reported data is quite useful, it does not reflect the underlying causes for the delays in both motion and trial decisions.  It could be that an increased volume in initial filings combined with a greater tendency of parties to file contested motions is one of the causes.  This is particularly true in situations where parties cannot resolve discovery differences that result in increased (and sometimes unnecessary) motion practice.   Given current trends, it may be beneficial for both the Board and parties to reexamine how to improve participation in Accelerated Case Resolution (ACR) as well as other rules designed to streamline proceedings for greater efficiencies.

A trademark registration for nutritional supplements was recently cancelled by the U.S. Trademark Trial and Appeal Board.

Background.  The case, Food Global Innovation GP LLC v. Tuong Nguyen, sought cancellation of U.S. Reg. No. 4799824 of VITASTRONG and Design was nutritional and herbal supplements.  The grounds for cancellation were abandonment.   The Petitioner had filed trademark applications for VITAXTRONG, VX VITA XTRONG and Design, and VX VITA XTRONG.for dietary and nutritional supplements.  The Registrant’s trademark was cited against the Petitioner’s applications as a basis for refusal.   To remove the grounds for refusal, Petitioner moved to cancel the cited registrations.

A petitioner must establish the following elements to prevail on grounds of abandonment:  (1) standing; and (2) that the registrant has discontinued use of its marks on all of the registered goods for at least three consecutive years.  If the Petitioner is successful in establishing these initial proofs, then the  burden shifts to Registrant to show that it had a bona fide intention to resume use.    Alternatively, it could show excusable non-use.  Here, the evidence revealed that the Respondent redirected its vitastrong.com website to another website owned by it.  The redirected website did not  market, sell, or feature any products bearing the VITASTRONG mark.

In reviewing Respondent’s document production, the Board observed that Respondent’s lack of document production was lacking.  Specifically, Respondent did not produce any evidence of sales or transport of goods under the VITASTRONG and Design mark.  Nor did it produce documents showing the number of units sold or revenue received.  Respondent’s direct mail postcards that it produced that allegedly showed use of its VITASTRONG mark was deemed by the Board to be mere advertising.   It is a tenet of trademark law that mere advertising alone does not constitute trademark use.  Similarly, an internet page that shows products bearing the mark but do not have a means to order the product also do constitute evidence of use in commerce.

Holding.  As a result of Respondent’s lack of evidence that established its use of the VITASTRONG and Design mark, the Board cancelled its registration.

Trademark cancellation note:  This case is a reminder that not all advertising constitutes trademark use in commerce.  To prevent cancellation of a trademark on grounds of abandonment, It is a best practice to present evidence of sales, not mere advertising of products without a means to order.  Alternative grounds to petition to cancel a trademark may be found here.

A petition to cancel a trademark for abandonment is becoming more common.  This is due, in part, to the USPTO’s recent focus on clearing the registry of “deadwood” trademarks.

Trademark registrations that are subject to cancellation have one of two characteristics:

  • all of the goods or services have been abandoned;
  • some of the goods or services have been abandoned

Where all of the goods or services have been abandoned, the claim for relief is a total cancellation.  In instances where some of the goods or services are no longer in use, the claim if for partial cancellation.   A partial trademark cancellation can be for single-goods within a specific class.  It can also be brought against an entire class of goods.

Proof.   To establish a claim for trademark abandonment, the Petitioner must show that the registrant has discontinued use of the mark in connection with the associated goods or services.  The time period to establish a prima facie case is at least three-consecutive years of non-use.   If the petitioner is successful, the burden then shifts to the trademark registrant to show that it was had use of the mark during the time period.  In the alternative, the registrant could establish that it intended to resume use through justifiable non-use.

Standing.  A petitioner is also required to establish standing.  To do so, the petitioner must show that it has a legitimate interest in the outcome of the proceeding.  This means that it is not a mere intermeddler and has some sort of commercial interest to use the mark.

Why file?  Petitions to cancel based on abandonment may be filed at any time.  Often, a petition to cancel due to abandonment is filed because the attacked registration was cited as a basis to refuse a third-party’s later-filed application.  In such a case, the Applicant may file a petition to cancel to overcome the refusal to register.  If successful, the cited registration will be removed as a bar to the later-filed application.  A petition to cancel a trademark registration may also be brought by an Applicant as a counterclaim in a trademark opposition proceeding.  This strategy may be helpful where the opposer relies on several of its own registrations as grounds to oppose a third-party application.   When this occurs, the Applicant may seek discovery on whether the Opposer has indeed been using its pleaded marks on all of the goods set forth in the Opposers’ registrations.  If it appears that the Opposer has not been using its own marks on some of the goods cited in its pleaded registrations, a petition for partial cancellation may be proper.

If a petition for trademark cancellation has been filed against your company, it is important to determine your options.

A trademark cancellation proceeding for likelihood of confusion was recently decided by the Board.  It is a good lesson in evidentiary best practices.

In Marco Industries, Inc. v. Mark White, the Petitioner sought to cancel U.S. Reg. No. 4880452 of VITABUD GROW for fertilizers in International Class 1.   The petition for cancellation alleged that the Registrant’s mark creates a likelihood of confusion with Petitioner’s common law mark VITAGROW for plant foods.

In proving likelihood of confusion, the burden is on the Petitioner to first establish proprietary rights in its common law mark.  This may be shown through a prior registration, prior trademark use, or prior use as a trade name.  It may also be proven through prior use analogous to trademark use.   In this case, the Petitioner had to establish proprietary rights in its VITAGROW mark.  It also had to show that its mark is distinctive of its goods.   Distinctiveness can be either inherent or acquired.   The Petitioner would also have to show that its proprietary rights in and to its mark preceded the Registrant’s rights.

In this case, the Registrant’s application date operated as the priority date.  This was May 8, 2015.   The Petitioner introduced evidence of its use use of the VITA GROW Mark prior to 2014.  The evidence consisted of two pages of website archive page printouts from 2007 and 2008.   Despite this limited evidence, the Board held that the Respondent did not properly challenge the website printouts as hearsay.  Specifically, the Board held that it was incumbent on the Respondent to object to Petitioner’s evidence and it did not.  Since Petitioner’s evidence was submitted by Notice of Reliance, and not through testimony, the Respondent could have had the website pages stricken as impermissible hearsay.  Its failure to do so acted as as a waiver to any objection to the evidence.   Therefore, the website evidence of priority was admitted by the Board.  This procedural error proved fatal.

Attorney note:   Trial testimony in trademark opposition and cancellation cases may be submitted in one of two primary ways.  These are through oral or written testimony (via witness declaration) or through a Notice of Reliance.   Evidence submitted in connection with a Notice of Reliance is generally limited to self-authenticating evidence.  If a party attempts to introduce evidence in its Notice of Reliance (such as website pages), it is proper to do so only in limited circumstances.  If the evidence is being offered to establish the truth of the matter asserted in the print-out, then it can be challenged as hearsay.

It is important to consider your options prior to filing an Answer if your trademark application is opposed.

Trademark Opposition.   A trademark opposition is an inter-partes proceeding before the U.S. Trademark Trial and Appeal Board.  Any third-party may file a notice of opposition against a trademark on one or more several grounds.  These include that the applied for mark is:

  • likely to cause confusion with the Opposer’s preexisting registered mark or common law rights;
  • merely descriptive of the goods or services for which registration is sought;
  • primarily merely a surname;
  • geographically misdescriptive;
  • generic of the goods or services

In addition to the above grounds, the Opposer may claim that the Applicant:

  • lacked a bona fide intention to use the mark in commerce at the time it filed its trademark application;
  • committed fraud on the trademark office in the filing or maintenance of its trademark application

A trademark applicant usually has 40 days to answer a trademark opposition.   An Applicant can explore other options to settle the dispute prior to filing its Answer.  Some of those options are set forth below:

Narrow the identification of goods or services.   The jurisdiction of the U.S. Trademark Trial and Appeal Board is limited to issues of registration only.  In other words, the TTAB does not have the authority to order any applicant to cease using its trademark in commerce.  It can however, refuse the trademark registration.  In likelihood of confusion cases, Opposers often seek an agreement with the Applicant.  The Applicant can agree to delete certain goods from its identification of goods.   If the Applicant agrees to do so, it is possible that the Opposer will agree to withdraw the opposition.

Withdraw the Application.   If the Applicant agrees to withdraw the application,  there is nothing left to adjudicate before the TTAB.  This is due to the Board’s limited jurisdiction.  Note, however, that a judgment will issue in favor of the Opposer.   This means that the Applicant will not be able to seek to apply for that mark using the same or similar goods in the future.  If an Applicant is considering withdrawing its trademark application, it is preferable to seek a coexistence agreement.

Enter into a coexistence agreement.  A typical coexistence agreement will permit the Applicant to continuing using its mark in commerce subject to certain limitations.  These may include that the Applicant delete certain goods from its identification or stipulate not to apply for related goods under the same mark in the future.    Whether to agree to enter into a coexistence agreement with an Opposer should be considered on a case-by-case basis.  In general, it is not wise to enter into an Agreement if the terms include that the Opposer is able to continuously monitor your future marketplace uses.  Moreover, if the Agreement has any clause for breach of the Agreement, this is something where an Applicant should hesitate to sign.   The best coexistence agreements are those that are definitive, limited in time and scope, and do not leave open any possibility to breach the agreement in the future.

By considering the above-alternatives, an Applicant may still be able to achieve its business goals without having to get involved in a costly trademark opposition proceeding.  While every case is different and no outcome is certain, it is advisable to engage in discussions early in the process to avoid any unnecessary escalation in attorney’s fees and risks to your marketing plans.

Practical Advice for TTAB proceedings was the subject of a session at INTA Boston 2019.

The topics of discussion were as follows:

Difference between TTAB and District Court.   Proceedings before the TTAB are usually more narrow and streamlined.  This is due, in large part, on the limited jurisdiction of the Board to issues of registrability only.

Scheduling.  The TTAB gives the parties a little more flexibility on the scheduling, particular where both parties consent to extensions of time.  In District Court, the court is usually more rigid and often seeks to force the parties to either commit to trial or to engage in settlement discussions.  That being said, there are certain mandatory deadlines in the TTAB that are not flexible, including serving discovery at least 30-days prior to the expiration of the period

Admission of Evidence.  In the TTAB, Notices of Reliance and Testimony declarations are the most-used vehicles for admission of evidence.  Direct evidence can be either through trial testimony deposition (in part of your case-in-chief) or by declaration.  Self-authenticating evidence, generally in the form of internet print-outs, trademark registrations, and other publicly available materials, can be admitted through Notice of Reliance.  Declarations also give the opposing party the option to either cross-examine the declarant, or attack the testimony in the form of your client’s own rebuttal affidavit.

Strategic Choices.  The issue of whether to proceed before the TTAB or district court is often dependent on the various factors.  Some of these include whether the mark is an intent to use, or perhaps in the venue where you believe your client may obtain a more favorable outcome.  Since the TTAB’s jurisdiction is on issues on registration only, it often looks at three main factors in making a decision:  (a) similarity of marks; (b) similarity of goods; and (c) similarity of trade channels.   These factors are often predictable and do not consider in great detail marketplace use as it relates to likelihood of confusion.  If a party files an opposition, there is always the risk that a declaratory judgment action in district court may be the responsive pleading.  In certain cases, a trademark applicant who is a defendant in an opposition can trigger its insurance coverage if it brings a declaratory judgment action for non-infringement.

Role of Interlocutory Attorney.   All contested motions are referred to the interlocutory attorney (IA).  The IA is also responsible for conducting the discovery conference (if requested).  Parties can also establish that they prefer to appear at deposition telephonically and to have motion be determined by phone rather than written opinion.

The speakers were Roxanne Elings, Kathleen McCarthy, and Judge Elizabeth Dunn of the U.S. Trademark Trial and Appeal Board.  The moderator was Pamela Chestek.