Trademark Cancellation

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A recent trademark cancellation action by Major League Baseball against an individual who had a registration for sports apparel is another victory for well-established brand names.

In Major League Baseball Properties, Inc. v. Christopher Webb, MLB petitioned to cancel U.S Reg. No.  4472701 for the mark MAJOR LEAGUE ZOMBIE HUNTER and design, for “clothing, namely, short and long sleeve t-shirts, sweatshirts, jackets, baseball hats, and beanies,” in Class 25, registered on the Supplemental Register.   The grounds were a likelihood of confusion under Section 2d of the Trademark Act, as well as dilution.  MLB also asserted that Respondent’s registration was void ab initio since Respondent never had a bona fide intent to use its mark in commerce as well as fraud on the Trademark Office.  In support of its standing and likelihood of confusion and dilution claims, MLB introduced four of its trademark registrations for MAJOR LEAGUE BASEBALL, including the MAJOR LEAGUE BASEBALL word mark, MAJOR LEAGUE BASEBALL and Design mark and two design marks of its iconic baseball player with bat and ball logo.  Three of MLB’s registrations were for apparel goods in International Class 25.

In a preliminary ruling on MLB’s motion for summary judgment on Respondent’s lack of bona fide intent to use its own mark in commerce and fraud, the TTAB granted  summary judgment on MLB’s standing and no bona fide use of Respondent’s mark on sweatshirts, jackets, baseball hats, and beanies. The TTAB denied Petitioner’s motion for summary judgment on no bona fide use of Respondent’s mark on t-shirts and fraud.

MLB claimed that its trademarks are strong, which would entitle it to a wide latitude of protection for likelihood of confusion purposes.  Based on its evidence of extensive sales, advertising, and wide spread recognition of the MLB brand, the Board agreed.  It went to to  conclude that the parties’ goods (at least some of them) were legally identical, which would presume that the channels of trade and classes of purchasers are the same.    Finally, it observed that the parties’ design marks gave a confusingly similar commercial impression. Based on a totality of the circumstances, the Board found the Respondent’s mark to be confusingly similar to MLB’s marks and accordingly ordered Respondent’s registration be cancelled.

Trademark cancellation tip for large brands  Well-established brands are often successful in trademark cancellation proceedings based on the strength of their trademarks and supporting evidence.  Therefore, it is important for brand owners to create a repository of historical sales and advertising figures, as well as marketing and advertising specimens and trade channels that shows widespread use and consumer recognition of its marks.

Trademark cancellation proceedings based on abandonment continue to present challenges to trademark registrants.   In the latest case before the US Trademark Trial and Appeal Board, however, the registrant’s trademark registration was spared.

In AD5 Inc. v. Jennifer M. Estes dba #SELFiE T’s, the Petitioner sought to cancel Reg. No. 4642072 of the Registrants #SELFIE design mark (in a reverse mirror image) for a wide variety of apparel items in International Class 25.  Petitioner had alleged that Registrant had abandoned the trademark.  The relevant statute to prove abandonment is Section 45 of the Trademark Act:

Section 45 of the Trademark Act provides that a mark shall be abandoned when its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances.

The party seeking cancellation bears the burden of proof to establish abandonment by a preponderance of the evidence.  If the Petitioner can show nonuse of the Registrant’s mark for at least three consecutive years, the burden shifts to the registrant trademark owner to show that it was using the mark or that it had an objective intent to resume use.
Here, although Petitioner alleged that Registrant was not using the mark for at least three consecutive years, the Registrant denied the allegation, citing evidence that she maintained her website for the products bearing the  mark and donated goods to potential marketplace customers.  The Board noted that nonuse of a mark due to lack of demand coupled with on-going marketing efforts may not constitute trademark abandonment.  In the end, Petitioner could not overcome Registrant’s evidence of continued marketplace attempts to sell the items.  This case stands as a reminder that the burden of proof always lies with a petitioner to cancel a trademark registration on abandonment grounds.
In addition to not proving its abandonment claim, the Petitioner was unable to establish its standing to bring the petition for cancellation.  Therefore, the Board’s dismissal of the petition was technically due to lack of standing.  The Board nonetheless proceeded to evaluate the merits of Petitioner’s abandonment claim, stating that Petitioner failed to establish its burden of proof.
Note:  The author was a recent CLE Faculty Member for a training webinar on trademark abandonment sponsored by Strafford, a leading educator of attorneys.

A trademark opposition involving beverage trademarks was the subject of our most recent post.  Now, we review a trademark cancellation dispute between two beverage trademark owners.  In both proceedings, the grounds were a likelihood of confusion pursuant to Section 2(d) of the Trademark Act.

In Rebel Wine Co. LLC v. Piney River Brewing Co., Rebel Wine petitioned to cancel Piney River’s Registration No. 4597351 of the mark MASKED BANDIT for beer and brewed malt based alcoholic beverages in the nature of beer.   Rebel Wine plead ownership of Registration Nos. 33119263 and 39743404 both for the mark BANDIT for wine and alcoholic beverages except beers.  The U.S. Trademark Trial and Appeal Board found that Petitioner had priority based on its earlier registrations.

In analyzing the likelihood of confusion between the beverage trademarks, the Board reiterated the well-known rule that two key considerations are the similarities between the marks and the relatedness of the goods.  Considering the marks in their entireties, it found that MASKED BANDIT and BANDIT are similar, therefore weighing in favor of likely confusion.   With regard to the relatedness of goods factor, the proper test is whether consumers would tend to believe that the parties’ respective products emanate from the same source.  Here, the Board observed that both parties had beer and/or wine in the goods covered by its registrations.  The Board also noted that it often concludes that “beer” and “wine” are related goods for purposes of likelihood of confusion.  In the end, it opined that in this proceeding was no different and found that the parties’ respective goods were related.   It also found that the trade channels of the parties and purchasing conditions were similar.  As a result of the totality of the evidence, the Board granted the petition based on a likelihood of confusion and Piney River’s trademark registration for MASKED BANDIT was cancelled.

Practice Note:  While the Board had indicated that each proceeding is different, when it comes to the similarity between wine and beer, it almost inevitably concludes that the two goods are related for purposes of likelihood of confusion.  This is despite the fact that here, Respondent introduced 237 pairs of third-party registrations of the same or very similar marks for wine and beer, respectively, owned by different companies.

While seeking to cancel a trademark registration on the grounds that is generic is often difficult to prove, it is not impossible.  Therefore, it is always prudent to be familiar with applicable rules and case law.

A generic term is the common descriptive term of a class of goods or services.   Generic terms can never function as a trademark since they are incapable of indicating a single source of the goods or services.   Public policy also prohibits the registration of generic terms since no one party should be able to appropriate such a term to the exclusion of others.   If a party claims that an existing registered trademark is generic, is can seek to cancel the trademark registration at any time.   Trademarks that were not generic at the time of registration can also be cancelled if they have subsequently become generic.  This is also known as genericide.   Infamous examples of genericide include the previously registered trademarks CELLOPHANE and ESCALATOR.

Whether a term is generic involves a tw0-part analysis, known as the Marvin Ginn test:  First, what is the genus of goods or services at issue? Second, is the term sought to be registered … understood by the relevant public primarily to refer to that genus of goods or services?

The first part of the Marvin Ginn test involves an examination of the identification of goods or services contained in the trademark registration.  The second part of the test of what constitutes the relevant consuming public is made in the context of the goods or services and the type of consumers who would fall under typical users.    Recent TTAB decisions have held that the absence of third-party evidence of use of the term is not by itself fatal to a finding of genericness. See In re Mecca Grade Growers, LLC, 125 USPQ2d 1950, 1958 (TTAB 2018).

Tips for Cancellation.  If you are considering petitioning to cancel a trademark registration on the grounds of genericness, it is important to consider the following:

  1.   Identification of goods.  If the identification of goods or services set forth in the registration are indicative of the genus of the goods, than a finding of genericness is more likely.  A simple example of this is SOURDOUGH for “bread and rolls.”   Conversely,  a registered trademark of “SOURDOUGH” for laptop computers will never be found to be generic of computers, since the term “sourdough” is not the genus of computers.
  2.   Internet use.    Proof of how the term is used, including dictionary definitions and third-party use, is probative of whether it is generic of the specific goods and services set forth in the registration.  A party seeking to cancel a registration should seek to gather and preserve this evidence prior to filing the petition for cancellation.
  3.  Registrant’s use.   If the registrant itself uses the mark in a generic manner to describe its goods or services offered under the term, than this is strong evidence that it is generic and should be cancelled.  To avoid cancellation, it is advisable that registrants educate their marketing department, vendors, and members of the consuming public that the mark is a registered trademark.  All marketing and advertising copy, including social media posts and campaigns, should be reviewed and monitored to ensure that brand guidelines are followed.

To discuss a trademark cancellation case on the grounds of the mark being generic, please contact the author.

Trademark cancellation due to abandonment is the subject of a recent decision by the Trademark Trial and Appeal Board.

In Yazhong Investing Ltd. v. Multi-Media Tech. Ventures, Ltd., the Petitioner sought to cancel four registrations of the Respondent.  The grounds for cancellation were fraud and abandonment.   Petitioner also sought to cancel two of the registrations on additional grounds of non-use.   All of the registrations were for the mark GIDGET for goods and services in multiple classes.   The entire list of goods and services of the collective registrations numbered in excess of one hundred distinct items.

Under Section 45 of the Trademark Act, a mark is abandoned if the following occurs:

When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. “Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.

Since federal trademark registrations are presumed valid, the party seeking cancellation bears the burden of proving a prima facie case of abandonment.  If this preliminary burden is met, it then shifts to the trademark registrant to rebut the showing with evidence.   Proof of non-use of at least three consecutive years establishes a prima facie case of abandonment.

In response to Petitioner’s discovery requests, Respondent stated that it had used the GIDGET Mark continuously from 2005 through 2012.  Yet it could not produce any verifiable evidence of sales.  It also indicated that it did not realize that it had to have continuous use on all of its goods and services listed in the registrations.  Instead, it thought that the law required it to only have use on at least one of the goods.  It also indicated that it was making ongoing licensing efforts to license the mark.  However the testimony of officers of Respondent’s predecessors in interest and third parties had shown that from at least 2008 through 2012, there was no use of the GIDGET mark.  This was enough for Petitioner to establish a prima facie case of abandonment, with the burden of showing an intention to resume use of the mark shifting to Respondent.

To support that it had an intent to resume use of the GIDGET Mark, the Respondent was required to build a record with respect to the activities it engaged in during the non-use period or what outside events occurred to support an intent to resume use.  In short, evidence of an intent to resume use must be more than a subjective intention; rather, there must be verifiable objective facts.  Moreover, the intention to resume use must be “within the reasonably foreseeable future.”   Here, the Respondent could not produce any evidence of  sales, advertising, negotiating of license agreements, other efforts to market goods and services associated with the GIDGET Mark.  Instead, the Board noted that Respondent’s evidence added up to little more than attempts to secure additional investors.   In totality, the Board concluded that Respondent’s activities did not constitute use or an intent to resume use, but rather merely an intent to reserve rights in the mark.  Accordingly, it ordered the trademark cancellation of the GIDGET Mark in the involved registrations due to abandonment.

Practice note:   This case presents a lesson for trademark owners to carefully monitor whether they are using their trademarks on all of the goods and services contained in their registrations.  If not, it is recommended that a consultation with a qualified trademark attorney occur.  A trademark cancellation can have serious implications to brand marketing and sales efforts.  To obtain further information on trademark cancellation legal strategies, contact James Hastings.

Food for thought.  A trademark cancellation may result from abandonment of a trademark.

In Local Foods LLC v. Foodsmith Bowen Osborn, the Petitioner sought cancellation of Registrant’s FOODSMITH and Design trademark for “health food, namely freshly prepared meals consisting primarily of local and organic meat, fish poultry, vegetables, properly proportioned, for delivery and pickup” in International Class 29 .  For purposes of trademark abandonment, a trademark registration is subject to cancellation if it has not been used for at least three consecutive years.  The objective evidence must also infer that the Registrant had no intention to resume use of the mark.

Rather than waiting for a trial on the merits, the Petitioner elected to file a motion for summary judgment seeking a ruling that Registrant had abandoned its Foodsmith mark.  Summary judgment is an acceptable method to dispose of a case where there are no genuine issues of material fact.  To prevail, the moving party has to show that a particular fact is not in dispute.  This may be established by citing to specific materials that have been made of record, including discovery responses and affidavits.  Once the moving party submits sufficient evidence to meet its proof, then the burden shifts to the non-moving party to demonstrate the existence of material facts for trial.

Here, Petitioner was able to show, via requests for admission, that the Registrant had not used its Foodsmith mark for at least three consecutive years.   The registrant failed to submit any evidence that the mark was still in use by a former partnership via implied license or that he intended to resume use of the mark.  He also admitted in answers to interrogatories that he had not yet used the mark himself.  Based on the cumulative evidence, the Trademark Board granted Petitioner’s motion and the FOODSMITH Mark was cancelled.

Practitioner’s Note:  In seeking a trademark cancellation, the moving party should be sure to plead the proper statutory grounds.  A petition for cancellation on grounds of abandonment is fairly straightforward.  Either there are facts to establish that the registrant has failed to use its mark for three consecutive years or not.   If you are in the position of a defendant/registrant, it is best to speak with a qualified trademark cancellation attorney.

Trademark opposition filings increased in 2016, according to a recent report released by the United States Patent and Trademark Office.  A summary of comparative 2015 findings can be found in our publication here.

Highlights of the report include the following performance statistics for 2016 U.S. Trademark Trial and Appeal Board activities:

  • Trademark 0pposition filings totaled 5,881 compared to 5,290 in 2015
  • Trademark cancellation filings totaled 1,848 compared to 1,763 in 2015
  • Trademark appeals filings totaled 3,121 compared to 2,992 in 2015

For the same period, the TTAB issued 35 precedential decisions, which was within its target range of 35-40 per year.   The average pendency of precedential decisions was 32.5 weeks for final decisions, compared to 48.1 weeks for the previous annual time frame.  The average time of interlocutory orders was also reduced, going from 45 weeks in 2015 to only 25 weeks in 2016.    The length of inter partes cases, however, has not changed substantially, with the average of decided trademark opposition and trademark cancellation cases being 154.3 weeks from commencement to conclusion in 2016, compared to 161.2 weeks in 2015.

Trademark opposition considerations.    When contemplating commencing a trademark opposition, it is best to keep in mind the following:

  1.  Estimated duration.    Most trademark opposition cases settle before the trial phase, which means that statistically, the probability that it will go all the way to judgment is unlikely.   That being said, a company should be prepared for all contingencies.  This means taking into account factors that could either exacerbate or shorten the litigation process.
  2.   Early case assessment.   An early case assessment and plan of action is an integral part of a proactive trademark opposition litigation strategy.
  3.   Accelerated case resolution.    The U.S. Trademark Trial and Appeal Board has an accelerated case resolution (ACR) program that when used properly, can shorten the duration of a proceeding.   Details will be discussed in later posts.

To learn more about U.S. trademark oppositions or to discuss your company’s case, contact James Hastings at Collen.

Tyler Perry is one successful businessman – and now new trademark owner.

Mr. Perry, the acclaimed actor, writer, and producer, has prevailed in cancelling the trademark registration of “What Would Jesus Do” (“WWJD”) of the television personality, Kimberly Kearney.  The case is Tyler Perry Studios, LLC v. Kimberly Kearney.

Kearney, one of the contestants on the VH1 reality show, “I Want to Work for Diddy,” is the owner of U.S. Registration No. 3,748,123 for the WWJD trademark for “entertainment services in the nature of an ongoing television reality program.”  Kearney claimed to have first used the trademark on November 21, 2007; the registration issued on February 16, 2010.

Perry subsequently applied for the WWJD trademark for “entertainment services, including television, multimedia, and motion picture services,” as well as other related entertainment services.  In the petition for cancellation, Perry sought to have Kearney’s trademark registration cancelled based on the fact that Kearney never commenced use of the trademark, as required under the Trademark Act, and therefore was not entitled to registration.  As additional grounds, Perry also stated that Kearney had abandoned her trademark with no intent to resume use.

In its ruling in favor of Tyler Perry, the Trademark Trial and Appeal Board reviewed the applicable law regarding non-use of a trademark and other factors that are relevant to the case.  Under Section 1(a) of the Trademark Act, use of a trademark in commerce is a prerequisite to a party being granted a trademark registration.  The term “use in commerce” means the use of the mark in the ordinary course of trade, and not a mere token use for purposes of obtaining a registration.  Furthermore, where it is found that there was no use of the trademark prior to registration being issued, the trademark registration may be deemed void for failing to comply with trademark laws.  The Board found that here, the registration owner failed to rebut any of Perry’s allegations, either during the discovery period or at trial.  Rather, Kearney simply relied on the original filings and the statements and evidence of alleged use of the mark contained therein.  Even there, her evidence was not properly submitted and therefore not considered by the Board, which reasoned:

As noted above, Respondent did not submit any testimony or evidence during trial.

This case illustrates the dangers of not following the rules and procedures for trademark cancellation proceedings that are set forth in the Trademark Board Manual of Procedure.  The registrant’s failure to offer testimony or supporting evidence to rebut the petitioner’s allegations left the Trademark Board with no other alternative but to cancel the trademark registration.

Redskin    n.  slang  (often disparaging and offensive).   a north American Indian.   Random House Dictionary of the English Language 1618 (2d Ed. 1987).

In a monumental decision, the U.S. Patent and Trademark Office has cancelled several trademark registrations of the Washington Redskins national football league team, on the grounds that the term “redskins” is disparaging to Native Americans.

The case, Amanda Blackhorse, et al. v. Pro-Football, Inc.,  which was brought on behalf of five Native Americans, sought cancellation of numerous trademark registrations for the marks Washington Redskins®, The Redskins®, and Redskinettes®,  pursuant to Section 2(a) of the Trademark Act, which bars the registration of a trademark that “consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt…”

The Evidence in Support of Cancellation

In concluding that the term “redskin” is disparaging to Native Americans so as to order cancellation of the trademarks, the U.S. Trademark Trial and Appeal Board carefully analyzed the testimony and supporting evidence surrounding the derivation of the term “redskins” as well as the perception among Native Americans as to the term and whether they found it to be offensive.  The evidence, which was voluminous and consisted of evidence and trial testimony from a previously litigated case on the same issues, included dictionary entries, media reports and a survey that all weighed heavily in favor of disparagement.   Also submitted into evidence was a 1993 resolution passed by the National Congress of American Indians,  (“NCAI”) that specifically condemned use of the “redskins” by the NFL team, and sought cancellation of all of the team’s trademarks that contained the offensive term.  The NCAI resolution was found to be highly probative, since the NCAI represents a large composite of the Native American population in the United States and their perception of the term “redskin” as being that of a racial slur and/or highly offensive to individuals of  Native American heritage.

Based on a totality of the evidence, the Board, in a 2-1 decision, issued an order cancelling all of the trademark registrations at issue, stating in part:

We decide, based on the evidence properly before us, that these registrations must be canceled because they were disparaging to Native Americans at the respective times they were registered.

The NFL and Washington Redskins are expected to appeal the case in the U.S. federal courts.

Legal Note:  The decision does not prevent the Washington Redskins from continuing to use the trademarks in commerce.  This is because the U.S. Trademark Trial and Appeal’s Board jurisdiction is limited to trademark registration issues only; as such, it does not have the statutory authority to order parties to cease using trademarks in association with the sale of goods and services.

The Trademark Trial and Appeal Board recently published a summary of Trademark Opposition and Cancellation filing and performance results for the fiscal year 2013.

As predicted, the number of trademark litigation proceedings before the board increased as compared to the preceding year. While it could be theorized that the increase was due to more trademark applications being filed, another explanation could be that trademark owners are making the protection of their valuable trademarks and brand names a priority.  Filing a trademark opposition in the United States Patent and Trademark Office can be a valuable use of a company’s legal budget when compared to a trademark infringement action in the United States district courts. In a federal court action, not only can the risks be greater and the legal expenses higher, but quite often litigants in trademark infringement cases are less likely to settle if they have invested considerable product development and marketing dollars into a new trademark.

2013- Summary of TTAB New and Pending Matters

Trademark opposition and trademark cancellation figures for 2013 include the following (increases over the preceding year are indicated in parentheses):

  • Extensions of time to oppose:   16,939 (negligible change)
  • Trademark Oppositions filed:     5,278  (+2.3%)
  • Trademark Cancellations filed:  1,513  (+3.4%)

Most interestingly, the TTAB’s productivity increased in number of cases decided (+26.3%) while decreasing in the amount of average total pendency of trial cases (-6.8%).  That being said, while the average total pendency of cases that proceeded to trial was 189.5 weeks (hardly a “rocket docket”), it may be explained in part by cases being stayed pending decisions on discovery motions and/or stays due to on-going settlement discussions.  For brand owners considering opposing a trademark application, there are several key takeaways:

  • Extensions of Time are Popular.  Filing an extension of time of an additional month to consider whether to file a file a notice of opposition makes sense.   The extension permits trademark owners to discuss the matter with their trademark attorney, and gather additional facts to determine whether a filing a trademark opposition is a prudent course of action.
  • More Oppositions are Being Filed.  Trademark owners are finding inter-partes proceedings before the U.S. Trademark Trial and Appeal Board to be a viable trademark protection alternative to U.S. District Court litigation.
  • Trademark Cancellations are on the Rise.  A petition to cancel a trademark registration is often filed as the result of a trademark application being initially refused by the U.S. Patent and Trademark Office based on the existence of a preexisting registration deemed to be confusingly similar.  The applicant will then file a Petition to cancel the cited registration so that its application can mature to registration.

Opposing a trademark application or seeking to cancel a trademark registration are important components of an effective United States trademark protection and portfolio management strategy. Brand owners and companies that are serious about protecting their valuable brand assets in the United States should consult with their U.S. trademark attorneys on how to best formulate a trademark portfolio protection plan.