In a recent decision under Section 2(d) of the Trademark Act, the United States Trademark Trial and Appeal Board analyzed what factors make a trademark arbitrary and strong for purposes of a likelihood of confusion analysis.  Indigo Star, Inc. and H2d Properties, Inc. v. Patti’s Enterprises, L.L.C.

Applicant filed two applications for the trademark THE PINK TRACTOR (one in words and the other a design mark) for ” retail store services featuring a wide variety of women’s clothing, apparel, footwear, fashion accessories, and jewelry”  in international class 35.   Opposer, H2d Properties, Inc.  filed notices of opposition against registration of applicants marks based on  a likelihood of confusion with Opposer’s TRACTOR BRAND JEANS® and TRACTOR® marks for men’s, women’s, children’s clothing in International Class 25.

In its likelihood of confusion analysis, the Board first considered whether the marks were similar  in sound, appearance, meaning, and commercial impression.  For comparison purposes, the Board used Opposer’s TRACTOR word mark (not its TRACTOR BRAND JEANS mark) to evaluate with Applicant’s THE PINK TRACTOR marks.  The Board found that the “tractor” portion of  opposer’s mark was the dominant portion, further indicating that the term tractor did not have any significance with regard to clothing or retail services; thus the registered mark was considered to be arbitrary and strong.   This conclusion was further supported by the fact that the term “pink”  in applicant’s mark was admitted by applicant to be suggestive of a color for girl’s clothing.

The Board went on to state that goods can also be held to be confusingly similar to related services, and that a goods-to-goods comparison is not always required:

We have often held that confusion is likely where one entity uses a mark for goods and another uses the same or a similar mark for a retail store that sells such goods.

(citing cases that made such a finding with regard to general merchandise stores and furniture and women’s clothing stores and cosmetics).

Although the Applicant did not present any evidence at trial, the board raised the important legal issue that in a trademark opposition proceeding, the Opposer always bears the burden of proof to establish its claims by a preponderance of the evidence.  This serves as an important reminder that brand owners and trademark attorneys should always be sure that each and every element of its case-in-chief has adequate factual and evidentiary support.

The U.S. Trademark Trial and Appeal Board has ruled in favor of Pepsi-Cola in a trademark opposition case filed by the New York beverage giant against a pro se applicant in the matter of Pepsico, Inc. v. Jay Pirincci.

The Applicant had sought registration of the mark CAN DEW for  nutritional drink mixes to be used as meal replacement in International Class 5.  Pepsi opposed the application on the grounds that it was confusingly similar to its well-known family of Mountain Dew® trademarks for soft drinks, including Dew®, Do the Dew®, and Mountain Dew®.

In its decision, the Board assessed the Dupont Factors for likelihood of confusion, finding that the Mountain Dew® mark is a famous mark based on its extensive use and advertising over the years.

Originally, Applicant had filed for registration of the CAN DEW Mark for both nutritional supplements in international class 5 as well as fruit drinks and fruit beverages; fruit flavored energy drinks; non-alcoholic malt beverages; and malt beer in international class 32.  Pepsi then moved for summary judgment on its likelihood of confusion and dilution claims.

The Board partially ruled in favor of Pepsi on the issues of fame and similarity of the marks as well as likelihood of confusion with Pepsi’s Mountain Dew® marks and goods in International Class 32.  The Board, however, found a genuine issue of material fact as to whether Applicant’s nutritional drink mixes would be sold in the same channels of trade as the Opposer’s products and/or whether Applicant intended to trade upon Opposer’s goodwill.  Therefore, partial summary judgment was entered in favor of Pepsi for likelihood of confusion with respect to International class 32 beverages and was denied for International Class 5 nutritional drink mixes.

In its extended analysis, the Board pointed out that for purposes of likelihood of confusion, the Applicant filed for the word-mark CAN DEW in standard characters, without any visual design or label elements.  Therefore, Applicant could not compare its design labels with the Mountain Dew design label marks since Applicant had also applied for the goods as word marks.  Likewise, Applicant’s applied for goods were compared in their entirety to Applicant’s registered goods.   This correct interpretation of trademark law prevented Applicant from a more liberal interpretation of the likelihood of confusion factors.  The Board also ruled that any interpretation (or ambiguity) in the identification of goods must be construed in favor or the prior user, here, Pepsico.

In the end, the Board ruled in favor of Pepsico on the issue of likelihood of confusion for the Class 32 goods, thereby denying registration of Applicant’s mark, stating both expressly and implicitly that the evidence in support of the fame of Pepsi’s cited registrations (by way of historical advertising, promotional, and sales figures) as well as the similarity of the marks weighed mightily in their decision.

The moral of the story?  When one has a trademark that is deemed famous, all other arguments against likelihood of confusion seem to become secondary.

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.

A U.S. trademark cancellation proceeding is a legal case, similar to a civil lawsuit (although it is by contrast processed in the Trademark Trial and Appeal Board).

Trademark owners often have situations where their trademark application has been refused by the U.S. Patent and Trademark Office due to a preexisting trademark registration.

If the refusal to register is maintained, then filing a petition for cancellation of the cited trademark registration may be an effective means to ensure that their trademark rights are perfected.

What is a Petition for Cancellation?

In the United States, trademark owners have the right to cancel a trademark registration of any other party that it believes may be damaging to its own trademark rights.

Petitions for cancellation of a trademark registration are heard before the U.S. Trademark Trial and Appeal Board, the adjudicative body of the United States Patent and Trademark Office.

What are the steps in a Petition for Cancellation Proceeding?

The procedural rules of U.S. trademark cancellation proceedings may be found in the Trademark Trial and Appeal Board Manual of Procedure.

Deadlines and procedures before the Board are specific, and must be followed at all times. Therefore, strict adherence to the rules is encouraged of all parties appearing before the Board.

What are the Grounds for a Cancellation?

Petitions for cancellation of a trademark registration are governed by 15 U.S.C. Section 1064.

There are several legal grounds that exist to cancel a trademark registration, including priority, abandonment (by non-use of at least three consecutive years together with an intent not to resume use), and fraud.

There are additional grounds as well, such as priority of use and genericness.

When can a Trademark Cancellation Action be Filed?

The time in which a cancellation action must be filed depends on the grounds for cancellation.

A cancellation petition may be filed:

1. at any time within five years of the trademark registration date

2. at any time if the trademark becomes abandoned

3. at any time if fraud is alleged in the procurement of the trademark registration

4. if any time the registered mark becomes merely descriptive or generic of the goods or services for which it is registered.

Parties should note that trademark cancellation proceedings are adversarial proceedings, and, like any other civil proceeding, require specialized knowledge of the law and procedures.

Therefore, it is always best to consult with a trademark cancellation lawyer.

To discuss the possible representation of your company in a Trademark Opposition or Trademark Cancellation matter, contact us now.

Companies often wonder what recourse that may have when another party is infringing on their valuable trademark rights.  In proceedings before the United States Patent and Trademark Office, two causes of action generally come to mind: opposing a trademark application and canceling a trademark registration.  It is helpful to briefly distinguish the elements of each cause of action and when it can be used.

Opposing a Trademark Application.  A trademark opposition is when a party opposes a trademark application of a third-party.  Any party who believes it may be injured by the registration of a trademark by another may file a Notice of Opposition in the Trademark Trial and Appeal Board of the United States Patent and Trademark Office.  Although there are several grounds for bringing a trademark opposition, one of the most common is that the trademark of the Applicant is likely to cause confusion, cause mistake, or otherwise deceive the relevant consuming public into believing that the goods or services of the Applicant are identical to, sponsored by and/or endorsed by the opposing party.

Canceling a Trademark Registration.  A trademark cancellation is the legal mechanism that a party may invoke to cancel an existing trademark registration of a third-party. Some of the grounds for canceling a trademark registration include that the trademark has become generic of the goods or services it describes; non-use of the trademark by the registrant for at least three consecutive years without an intention to resume use; and fraud on the Trademark Office in procurement of the registration.

Identity of the Parties. In a trademark opposition proceeding, the party in the position of the plaintiff is the Opposer and the defendant is the Applicant.  The Opposer has the burden of proof to prove the allegations by a preponderence of the evidence.  In a trademark cancelation proceeding, the Petitioner is the plaintiff and the Respondent (or Registrant) is the defendant. The Petitioner in a cancellation proceeding carries the burden of proof.

It should be noted that the jurisdiction of the U.S. Trademark Trial and Appeal Board, the administrative body that adjudicates trademark opposition and trademark cancellation actions, is limited to the registration/non-registration of a trademark.  It does not have the authority to order any party to cease use of a trademark in commerce.  That jurisdictiional authority rests with various state and federal courts.

The resolution of trademark opposition and trademark cancellation motions by telephone conference is discretionary with the Trademark Trial and Appeal Board.  Generally, the Board may schedule a conference at the request of one or more parties, or on the Board’s own initiative.

Contacting the Trademark Board attorney.  If a party believes that a matter may be resolved by telephone rather than written motion, the party must first contact the interlocutory attorney by telephone.  The initial contact should be limited to a brief statement of the issues to be addressed, with no discussion of the merits. At that time, the Board attorney will determine whether the issue is best suited for a telephone conference. If so, the Board attorney may require each party to file a motion or brief or written agenda to frame the issues for the conference. Should the Board attorney feel that the issue is better suited for disposition by written motion, he/she will advise the parties.

Time for requesting conference.  A party that intends to file a motion may request a telephone conference before it filed the motion. The non-movant that is served with a written motion may request that the motion be resolved  telephone.  Parties are encouraged to contact the board attorney at the earliest possible time so as to avoid delay.  The Board will arrange for a time for the conference at its earliest convenience.

Initiation by the Board.  The trademark board attorney, in his/her own discretion, may institute a telephone conference to dispose of a pending motion. In such a case, the Board attorney will either indicate that the responding party must first file a written response, or be prepared to make an oral response during the telephone conference.

Best practices.  Parties with matters before the Trademark Trial and Appeal Board should take advantage of the use of telephone conferences with the Board to decide or narrow discovery disputes.  The resolution of disputes by this mechanism, without the need for extensive motion practice, serves the interest of tboth parties.  Telephone conferences, in many cases, are also a more cost-effective means for the parties and also serve to narrow the issues for adjudication, leading to possible early resolution of the trademark opposition or cancellation proceeding.

Parties are encouraged to discuss the use of telephone conferences with the Trademark Board with their trademark opposition attorney or trademark cancellation attorney.  Further information on the use of teleconferencing to resolve issues before the TTAB may be found on the Trademark Trial and Appeal Board website.

In an effort to facilitate case management and to reduce litigation expenses, the Trademark Trial and Appeal Board permits certain motions to be hear via telephone conference.  These include motions in the pleading phase, discovery phase, and/or the trial phase of a trademark opposition or trademark cancellation proceeding.

Examples of motions that the board may dispose of by way of telephone conference include:

  • motions to extend deadlines
  • motions to suspend proceedings
  • disputes regarding interrogatory numbers and limitations
  • motions to compel the attendance of a witness at deposition
  • motions to quash a notice of deposition

The availability of telephone conferences is not limited to motion practice. Additional matters that the parties might want to consider bringing before the board by phone include disputes involving:

  • the right of priority to obtain discovery multiple discovery responses where a narrowing of the issues is warranted; and
  • matters where board guidance would be helpful in interpreting the rules of practice before the trademark trial and appeal Board.

Parties are encouraged to take advantage of the Board’s willingness to expedite matters by phone.  While it may not be effective for all matters, the resolution of disputes by phone are in the best interest of all parties, particularly when decisions on formal written motions take approximately 3-4 months to be resolved.

Futher information on the Board’s telephone conferencing dispute mechanism may be found on the Trademark Trial and Appeal Board website of the United States Patent and Trademark Office.

Once a trademark opposition proceeding has been commenced, there are several procedural and substantive means by which the parties may bring about an amicable resolution of their dispute. Knowing how to effectively negotiate a favorable outcome is essential.

Substantive strategies to settle a trademark opposition proceeding include:

1. By Amendment: by narrowing the identification of goods in the application, it is possible to allay the concerns of the trademark opposer through the deletion of those goods in the application that it finds most objectionable.

2.  By Withdrawal:  Quite often, the trademark opposer’s main concern is to keep confusingly similar trademarks from appearing on the principal register. In this case, the parties may agree for the trademark applicant to withdraw its application in exchange for a promise that the trademark opposer will not object to the applicant’s use of the trademark in commerce.

3. By Timing:  Trademark opposers have little incentive to settle until after the completion of the discovery period.  At that time, the parties are better able to assess the strengths and weaknesses of their respective positions.  If you are the applicant, it is best to wait to discuss any possible settlement until at least after the Answer has been filed.

Procedural methods to conclude a trademark opposition proceeding include:

1. Withdrawal by Opposer:  Under the Code of Federal Regulations that governs trademark opposition proceedings, a trademark opposer may withdraw its opposition without prejudice at any time prior to the Applicant’s filing of the Answer.   if the opposition is withdrawn after the answer has been filed, then the written consent of the applicant is required for the opposition to be withdrawn without prejudice.  Without such consent, the withdrawal of the opposition will be deemed to be with prejudice to the Opposer’s right to reinstitute a proceeding at a later date.

2.  Withdrawal by Applicant: After a trademark opposition has been commenced, an applicant may expressly abandon its trademark application only with the written consent of the Opposer.  The failure to obtain the written consent of the Opposer shall result in judgment being entered against the Applicant.

An experienced trademark opposition attorney will be able to discuss the best available options to settle a trademark opposition case in a manner most favorable to his/her client.  By doing so, it may save precious time and money in product development and marketing costs associated with the trademarks at issue.  Additional trademark opposition settlement strategies will be discussed in future posts.

The Trademark Trial and Appeal Board offers a helpful frequently asked questions section that provides basic information regarding the trademark opposition and trademark cancellation process.  Various Trademark Trial and Appeal Board subjects are summarized, including:

  • What is a Trademark Opposition?  A trademark opposition is when one party contests the application for registration of a trademark by another party.  Quite often, the bssis for the opposition is a likelihood of confusion with the Oppoer’s previously registered trademark.  A trademark opposition proceeding is commenced by filing a Notice of Opposition. 
  • What is a Trademark Cancellation?  A trademark cancellation is when one party seeks to cancel the trademark registation of another party.  Grounds for a trademark cancellation may include fraud, abandonment (by lack of use for three consectutive years and an intention not to resume use), and other grounds, such as genericness. A trademark cancellation proceeding is commenced by filing a Petition for Cancellation.
  • What is the Procedure for a Trademark Opposition?  After a Notice of Opposition has been filed, the Trademark Trial and Appeal Board will serve a copy of the Notice on the Applicant, together with a schedule of the discovery and trial dates.  The Applicant will have forty days from the maling date of the Trademark Board’s notice of commencement of the case in which to Answer or otherwise plead.
  • What is the Procedure for a Trademark Cancellation?  After a Petition for Cancellation has been filed, the Trademark Trial and Appeal Board will serve a copy of the Petition on the trademark registrant, together with the discovery and trial schedule.  The trademark owner will then have forty days from the date of the Trademark Board’s notice of commencement of the trademark cancellation proceeding to either answer, or otherwise plead.

Parties who have trademark opposition or trademark cancellation matters before the Board should note that the Trademark Board rules of practice are extensive and must be followed without exception so as to protect the parties’ procedural and substantive trademark rights. These rules may be found in the Trademark Board Manual of Procedure.

The term “trademarking” is one often used by businesses and almost never used by trademark lawyers.  The reason?  Because the phrase “trademarking” does not accurately reflect how US trademark law and protection works.

Under US trademark law, trademark rights are based on use of the trademark or brand name in commerce.  Therefore, strictly speaking, registration of the trademark is not required.  However, owning a federal trademark registration is highly recommended in most instances, as it provides several legal and commercial advantages, such as:

  1. The ability to bring an action for trademark infringement in U.S. federal court
  2. Reliance on the U.S. trademark registration to obtain registrations in foreign countries
  3. The ability to file the U.S. trademark registration with U.S. Customs to prevent importation of infringing or counterfeit goods

 If you have an unregistered trademark, you may use the “TM” (trademark) or “SM” (service mark) designation.   The federal registration symbol “®” can only be used after the trademark achieves registration status in the United States Patent and Trademark Office.

Contrary to popular belief, obtaining a federal trademark registration is often nuanced and difficult, and is not the same as registering a trade name with the Secretary of State’s Office of a company’s home location. Therefore, it is highly advisable to consult a top trademark lawyer prior to using a trademark in commerce in association with goods or services.  By speaking with a trademark lawyer early in the product naming selection process, it may be possible to avoid large and unnecessary litigation costs that may arise from ignorance of U.S. trademark law.