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.

What are Trademark Cancellation and Priority Evidence? [Case Study]

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 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 a waiver to any objection to the evidence.

Therefore, the website evidence of priority was admitted by the Board. This procedural error proved fatal.

Important Note on Trademark Cancellation and Priority Evidence

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.

For more inquiries about trademark cancellation and proving priority, contact us now and we’ll be happy to help!

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.

A recent petition to cancel a trademark registration is a good lesson in what constitutes a well-drafted cause of action.

In Bonehead Brands, LLC v. Direct Impulse Design, Inc.,  Petitioner sought to cancel Reg. No. 3182681 of the mark BONE HEAD OUTFITTERS and Design for various apparel items in International Class 25.   The Respondent thereafter filed a motion for summary judgment on Petitioner’s pleaded claim of abandonment. The history leading up to the motion for summary judgment and the Board’s decision deserves comment.

On May 11, 2016, the Respondent filed a combined Section 8 and Affidavit together with a specimen of use that purported to show the mark in continuous commerce.  The USPTO accepted the Section 9 renewal portion of the affidavit, but rejected the specimen submitted in support of the Section 8 affidavit of continuous use.   The USPTO required a substitute specimen be submitted.   The Respondent failed to submit a response to the Office Action within the six (6) month period for doing so.

Shortly thereafter, the Examiner issued a second office action.  There, the Examiner stated that the trademark registration would be cancelled if the Respondent failed to furnish an acceptable substitute specimen of use within an extended six (6) month period.  Approximately one week later, the Petitioner filed a petition for cancellation of the registration.  Petitioner indicated that its basis was on the grounds of abandonment.  Two days later, the Respondent filed a combined Section 8 and 9 declaration with a substitute specimen.  The combined Section 8 and 9 declaration was accepted and the registration was renewed.

In its motion for summary judgment, Petitioner contended that the BONE HEAD OUTFITTERS registration should be cancelled on the grounds of abandonment. Section 45 of the Trademark Act governs the rule regarding cancellation of a trademark registration due to abandonment.  It states in pertinent part:

Abandonment of a Mark.  A mark shall be deemed to be “abandoned” if…the following occurs: (1) 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.

The Board ruled that while Petitioner stated that the petition was for abandonment, it failed to properly plead the predicate grounds for cancellation of a registration on the grounds of abandonment.   The failure to timely file a Section 8 or 9 Declaration is not a recognized ground for abandonment.  There is no mechanism for a third-party to bring a petition for cancellation due to failure to properly or timely file a Section 8 or 9 Affidavit.  Rather, in the absence of the Director of Trademarks issuing its own cancellation of a registration, a Petitioner can only seek cancellation on one of the grounds enumerated under Section 14 of the Trademark Act.  Here, the Petitioner failed to plead that the Registrant had abandoned its mark due to discontinued use with an intent not to resume use.  Accordingly, the Registrant’s motion for summary judgment was granted.

Author’s Note:   If you or your company requires additional information on a petition to cancel on the grounds of abandonment, contact us.

Updated: January 2022

U.S. Trademark Opposition: FAQ

A trademark opposition is a contested proceeding before the U.S. Trademark Trial and Appeal Board.   Any third-party may oppose the trademark application of another party.  An opposition may be filed only when the subject application is published in the Official Gazette of the U.S. Patent and Trademark Office.  The time to file an opposition is within 30 days of publication.  Extensions of time to file an opposition may be granted for an additional 30 days upon request, and up to 90 days for good cause shown.

Continue Reading Trademark Opposition Checklist for Opposers

In a trademark opposition proceeding, a party alleging a likelihood of confusion pursuant to Section 2(d) of the Trademark Act is required to establish specific elements of proof.  If you are a potential opposer, you will have the burden of proving the following evidentiary factors by a preponderance of the evidence:

Standing.  Standing is a threshold issue that must be determined in every trademark opposition or trademark cancellation before the U.S. Trademark Trial and Appeal Board.   In order to establish standing, the Opposer must show that it has a legitimate interest in the outcome of the proceeding and that it will be damaged should the defendant’s application issue.  In a likelihood of confusion case,  the Opposer’s standing can be established by introduction into evidence of a preexisting registration that it owns, its later-filed application that was refused based on the Applicant’s mark, or common law use that predates Applicant’s constructive date of first use.

Priority.   In Section 2(d) cases, the Opposer has the burden to prove priority of use as well as likelihood of confusion by a preponderance of the evidence.  A party may establish its own priority rights through ownership of a preexisting registration, through actual use, or through use analogous to trademark use.   Of the three, the least burdensome method is to show ownership of a prior registration.

Likelihood of Confusion.  Once the Opposer introduces evidence of its standing and priority, it must show that Applicant’s mark is likely to be confused with the Opposer’s pleaded marks.  The analysis of whether a likelihood of confusion exists has been enunciated in the 13 part test found in the case seminal case  In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) (the “DuPont Factors”).   In its many decisions that have applied the Dupont Factors test, the Board has held that some of the main factors are the similarity of the parties’ marks, similarity of the goods or services, and similarity of the trade channels.  Other important factors are the strength of the Opposer’s mark and the number of  similar third-party registrations that already exist on the register.

Practice Tips:  In evaluating the likelihood of success of a trademark opposition proceeding brought pursuant to Section 2(d), it is important for the potential Opposer to first assess its standing and priority.  If the Opposer’s priority cannot be established, then the the Board will deny the Opposition.  This means that the issue of likelihood of confusion is moot and will not be considered.  By fully vetting the likelihood of success of an opposition prior to filing it, the Opposer may save thousands in litigation fees and not subject its valuable trademark registrations to undue risk.  For further information on establishing evidence to support a Section 2(d) case, you may refer to our earlier post on the subject.

To discuss a trademark opposition or trademark cancellation case on the grounds of likelihood of confusion, please contact the author.

The Trademark Trial and Appeal Board recently released its TTAB filing statistics for fiscal year 2018.   These updated figures include year-to-year changes in the filing of appeals, notices of oppositions, and petitions for cancellations.  It also provides useful information on the disposition of cases.

Highlights include the following:  (percentage in parentheses signifies change over 2017)

I.   Filings

  • Appeals: 3,223; (+2%)
  • Extensions of time to oppose: 19,208;  (+3.9%)
  • Oppositions: 6,496 (+5.5%)
  • Cancellations: 2,253 (+7.2%)

II.   Contested Motions

  • # of decisions issued:  1,082  (+9.2%)
  • # of motions resolved by decision: 1318  (+6.5%)
  • Average pendency:  9.4 weeks  (+20.5%)
  • # of cases with motions awaiting decision:  165 (+12.2%)

III.    Trial Cases and Appeals Pendency

  • Appeals:  35.8 weeks (-7.8%)
  • Trial Cases: 140.3 weeks (-10.8%)
  • ACR Trial Cases:  106.3 weeks (-11%)
  • # of ACR Cases decided:  19 cases
  • Awaiting decision at end of period:  130 cases (+39.8%)


These most recent TTAB statistics yield some interesting observations:

  1.   TTAB litigation is increasing.   Opposition and cancellation proceedings are up on average approximately 6% combined.  This could be due in part to greater brand enforcement efforts being undertaken as a result of a stronger economy.  With regard to cancellations, the USPTO has made it quite clear that “deadwood” registrations that contain goods or services that are no longer used are subject to cancellation either in whole, or in part.  Therefore, the increase in both opposition and cancellation filings could be for offensive as well as defensive purposes.
  2.  There is increased motion practice.   Although both the Board and the Federal Rules encourage the just and speedy resolution of contested proceedings, and for both parties to cooperate fully, this sadly is not always the case.  While it cannot be proven, the failure to cooperate often results in protracted proceedings, including greater motion practice and higher attorney’s fees.
  3.  TTAB is focused on speedier resolution of cases.   The TTAB has made a commitment to several things that will help shorten the inter-partes cases lifecycle, including encouraging the parties to stipulate to Accelerated Case Resolution (ACR) procedures, engage in mandatory discovery conferences where settlement options are explored, and further mandate the cooperation between counsel.

Editor’s Note:   Parties are encouraged to protect their trademark rights at all times.   This is best done through proper monitoring and enforcement.  Should a trademark opposition or trademark cancellation proceeding be necessary to enforce a brand owner’s rights, it is recommended to speak with a qualified trademark attorney experienced in TTAB proceedings.


A trademark opposition may be commenced based on a likelihood of confusion with a prior registered mark.   The statutory basis for a likelihood confusion cause of action may be found in Section 2(d) of the Trademark Act.

To prevail on a Section 2(d) claim, the Opposer must prove by a preponderance of the evidence the following:

Standing.  Standing to bring or maintain an action consists of two elements.  First is that the Opposer has a legitimate stake in the outcome of the proceeding.  In other words, that it is not a mere intermeddler.  Second is that the Opposer must allege that it will be damaged if the application for registration issues.  Proof of a prior existing trademark registration is a common method for an Opposer to prove its standing.  Since standing is a low threshold, it is often met.  However, Opposers must be careful to include proof of its standing in its Notice of Opposition.  The failure to do so may result in dismissal of the proceeding.

Priority.   In a likelihood of confusion case, the Opposer must also establish that it has priority.  This means that it has superior trademark rights to that of the Applicant.  This can be proven by either asserting a prior trademark registration, prior common law use, or use analogous to trademark use.  In any of the above examples, the Opposer must show that its use predates the Applicant’s filing date (in the case of an intent to use application) or use dates based on a use-based application.

Likelihood of Confusion.   Assuming the Opposer can prove standing and priority, it then must show that Applicant’s mark is likely to cause confusion with the Opposer’s prior rights.  To do so, the Trademark Trial and Appeal Board looks to a 13-part test set forth in the seminal case  In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) (the “DuPont Factors”).   Although the weight given to the relevant DuPont factors may vary, the following two factors are key considerations in any likelihood of confusion analysis:

  • The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
  • The relatedness of the goods or services as described in the application and registration(s).

In addition to the above-factors, the Board also looks to the following key factors in making its determination:

  • Similarity of the parties’ trade channels
  • The conditions under which sales are made to buyers (impulse or sophisticated purchasing decision)
  • The number and nature of similar marks on similar good
  • Evidence of actual confusion

Each likelihood of confusion case is different as applied to the relevant Dupont Factors.  Therefore, it is important for an Opposer to thoroughly analyze the relevant legal standard and factual support for your case prior to bringing a trademark opposition proceeding.

Editor’s note:  If your trademark opposition is opposed based on a likelihood of confusion, it is advisable to speak with a qualified trademark opposition attorney.  Likewise, if you wish to oppose a third-party trademark application on the grounds that it is likely to cause confusion with your company’s prior trademark, it is best to review the guidelines contained in this article.  To discuss your case or for further information, feel free to contact the editor.