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.

For purposes of likelihood of confusion, not all beverage trademarks are created equal.

In Patrón Spirits International AG v. Conyngham Brewing Company, the Applicant sought registration of the mark PIRATE PISS for “beer, ale, and lager” in International Class 32.   Opposer Patron had opposed the application based on its ownership of the previously registered marks PYRAT and PYRAT RUM for distilled spirits and rum in International Class 32.  Patron had disclaimed exclusive rights in and to the term “rum” as uses in the latter mark separate and apart from the mark as shown.  In support of its case, Patron had submitted its registrations, and various internet printouts showing various spellings of the term “pirate.”  In addition, it introduced 13 third-party registrations showing marks where the goods contained both beer and rum.  However, of these, only 6 were use-based registrations, prompting the Board to observe:

Opposer’s submission of the six relevant third-party registrations is not very convincing for purposes of showing that beer and rum are sufficiently related that consumers expect them to emanate from the same source.

There is no per se rule that all beverages are related for purposes of likelihood of confusion.   The Board noted that while beer and wine are often found to be related in trademark oppositions involving beverages, each case must be weighed by its own facts and evidence.   Here, the Board proceeded to conclude that Opposer could not evade its burden of proving relatedness of the goods by “bootstrapping upon previous factual findings made in other decisions on different records.”   In the end, it believed that the both the quality and quantity of Opposer’s evidence was insufficient to prove that beer and rum are related goods for purposes of likelihood of confusion.  This factor, as well as the unique connotation and strong commercial impression of Applicant’s mark helped to distinguish it from Opposer’s mark.  Accordingly, the Board dismissed the Opposition and ruled in favor of Applicant.

Practice Tip:  In proving the relatedness of beverage trademarks, an Opposer should cite to as many third-party use based registrations as possible and further present probative evidence that the related goods in question are in use by the same source.  Note, however, that if the marks being compared are identical or highly similar, the degree of relatedness required between the respective goods need not be as great.

We recently spoke with Thomas Huthwaite, senior associate at Baldwins, to discuss New Zealand trademark protection issues.   Thomas has been named as “one to watch’” by the Legal 500 Asia-Pacific.

Please tell us a little about your trademark and brand protection practice.

I am a New Zealand barrister and solicitor, and registered Patent Attorney.  Since joining Baldwins Intellectual Property in 2010, I have been involved in litigation and dispute resolution work for a number of high profile international clients, including US-based companies Harley-Davidson Motor Corporation, Motorola, and Pepsico.  Some of my work has resulted in leading New Zealand trade marks jurisprudence, including:

  • Crocodile International Pte Ltd v Lacoste [2017] NZSC 14, the leading case on “non-use” of a trade mark
  • Zoggs International Limited v Sexwax Incorporated [2013] NZHC 1494 and Sexwax Incorporated v Zoggs International Ltd [2014] NZCA 311, leading cases on “bad faith” and “reputation” respectively

What should U.S. companies be doing to protect their valuable brand names in New Zealand? 

Early clearance and registration are certainly recommended as first steps for any brand owner.  New trade mark applications are published for potential opposition purposes at the end of each month, and opposition remains open for three months.  Monitoring for new applications and published marks is recommended in order to ensure that potential oppositions are identified early.

Marketplace, company name registration, and/or domain name registration searches are also recommended for certain industries, in order to identify potential or proposed use.  Customs notices are also recommended for those concerned about counterfeit goods, and can be a useful means of monitoring both imported and exported goods. Most disputes in New Zealand arise from the adoption of confusingly similar marks by different parties (rather than the misappropriation of marks, or adoption of identical marks).  Early identification and potential challenge increase the risks of successfully preventing the use of confusingly similar marks.  Early intervention also reduces the risk of dilution, damage, and/or customer confusion.

What is required for a company to be eligible to file a trademark opposition in New Zealand? 

 Broadly speaking, there are four types of trade mark proceedings in New Zealand: 

  • Opposition (before the Commissioner of Trade Marks, seeking to prevent registration of an application);
  • Invalidity (before the Commissioner of Trade Marks or the High Court, seeking to invalidate an already-registered mark);
  • Revocation (before the Commissioner of Trade Marks or the High Court, seeking to remove a mark for non-use); and
  • Infringement (in the High Court, requiring a registered trade mark).

There is no locus standi or other standing requirement for filing a trade mark opposition in New Zealand.  Potential opponents are encouraged to either oppose or seek an extension of time for opposing within the initial 3 month deadline, as it is much easier to oppose registration than to apply to invalidate an already-registered mark.  Potential grounds for opposing include that the mark applied for is likely to deceive or confuse consumers (for example, on the basis of the opponent’s prior use or registration of a similar mark), that there has been a false claim to ownership (including no intention to use the mark as applied for), that the application was made in bad faith, and/or that the application is contrary to law (including copyright law, consumer law, or common law).

What are some of the risks to international companies who decide not to file a trademark opposition? 

Not filing a trade mark opposition can be hugely detrimental, depending on the circumstances.  It may become impossible for the potential opponent to later challenge a registered mark (or its use), particularly if the owner of the registration has used the mark in New Zealand and established a reputation in the mark for itself.

New Zealand cases will typically be decided on a priority basis, meaning first to use or register should prevail.  However, it can be difficult to obtain evidence of use, which must have been genuine, within New Zealand, and may need to surpass mere “use” to establish a “reputation” or “goodwill” (depending on the type of proceeding or challenge).  This can also become clouded by any subsequent use of the same or a confusingly similar mark by a different entity. 

Early registration is therefore always desirable and recommended.  This is especially true given that trade mark infringement proceedings require a trade mark registration, and given that use of one’s trade mark registration provides an absolute defense to infringement.

If opposition proceedings are not filed, invalidity and revocation proceedings are still available.  However, as mentioned above, the burden in such cases does tend to become heavier for the challenger.  In the meantime, the challenger may also be prevented from freely using its mark in New Zealand, given the potential threat of infringement.  In-keeping with the general principles of priority, honest prior or concurrent use can provide a defense to infringement.

Editor’s note:   U.S. or international companies interested in speaking with Thomas about New Zealand trademark protection strategies may contact him directly via email or Linkedin.

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.

We recently spoke with Blake Knowles, partner at Cullen’s, to discuss Australia trademark protection issues.

1.  Please tell us a little about your background and brand protection experience.

Since joining Cullens, I have been responsible for managing, protecting and enforcing the trademark portfolios of several successful and well known Australian and overseas companies. I regularly prosecute trademark applications, represent clients in trademark oppositions and removal proceedings, and assist with enforcement of trademarks and resolution of disputes.

I was previously employed for ten years in the Australian Trade Marks Office. I am a former Senior Examiner, Principal Examiner and Examination Team Leader. During my time as an Examiner, I assessed several thousand trademark applications. As an Examination Team Leader, I was responsible for the management and mentoring of twelve other trademark examiners.

At the time I left the Australian Trade Marks Office, I was the Assistant Director of Trade Marks Hearings & Oppositions. In this role, I worked on a range of trademark legal and policy issues and was also responsible for authoring significant parts of the Trade Mark Office Manual of Practice and Procedure as well as creating training modules for trade mark examiners.

2.  What should U.S. companies be doing to protect their valuable brand names in Australia?  

Fortunately in Australia it is rare for applications to be filed in bad faith for the purposes of usurping a valuable overseas brand. Most disputes arise from adoption of similar marks by multiple parties.  The usual strategies for brand protection should be employed: i.e., registering early (claiming convention priority where possible from foreign applications), obtaining clearance searches prior to commencing use, and monitoring whether applications have been filed by other parties for key marks (or confusingly similar marks). Local distributors should also be tasked with watching the market and reporting any potential infringements early.

3.   What is required for a company to be eligible to file a trademark opposition in Australia? 

There is no standing requirement to file a trademark opposition in Australia or to commence a non-use removal proceeding.  It is much easier and more cost effective to prevent registration of a conflicting trade mark during the opposition period, compared to challenging the mark post-registration. However, the  Australia trademark opposition period is very short (2 months), and extensions are difficult to obtain.  Opponents who neither reside or carry on a business in Australia can be requested to pay security for costs at the commencement of opposition proceedings. If security is not paid, the Registrar has discretion to dismiss the opposition.  

4.   What are some risks to companies who decide not to file a trademark opposition?

The biggest risk is exclusion from the market or ring fencing.  Generally, if a company has first use and subsequent continuous use of a mark in Australia for particular goods or services, they should be able to defend an allegation of infringement by another registrant, and they will also have good prospects of obtaining their own registration on the basis of prior use (i.e. common law rights). However, their rights may be limited to the goods for which they have actually continuously used the mark in Australia, and this may inhibit expansion of activities in the Australian market.  Further, unless the company can afford to challenge a third party registration (which must done through the courts), they may need to co-exist with the other registrant in the market, which can create commercial difficulties and brand dilution.

5.   Do you have any other advice for companies who seek to obtain Australia trademark protection?

Many trademark applications are now filed in Australia via the Madrid Protocol. Such applications often designate many countries, and Australia is rarely the primary market of interest for such applicants. As such, an applicant who has filed via Madrid Protocol may be reluctant to incur costs defending an opposition in Australia. This can often result in an opponent winning by default, when a defense is not filed by the applicant.  Another useful strategy is to register key brands as domain names in the .com.au space. Other companies who may wish to adopt an identical brand to a foreign company may be discouraged if they cannot acquire the corresponding domain name in the .com.au space.

Editor’s Note:  U.S. or international companies interested in speaking with Blake about Australia trademark protection strategies may contact him directly via email or Linkedin.

The U.S. Trademark Trial and Appeal Board recently found no likelihood of confusion between two apparel marks.

In Manhattan International Trade, Inc. and Pure & Simple Concepts, Inc. v. Industrie IP Party, Limited, the Applicant sought to register the design mark FINEST QUALITY GARMENT MAKERS INDUSTRIE TURN OF THE CENTURY CLOTHING EST 1999 for clothing.   Upon viewing the logo, the largest portion of the mark is “Garment Makers Industrie.”  In its notice of opposition, Opposer alleged prior use and registration of a family of “INDUSTRY” marks for clothing, including INDUSTRY BY WORKWEAR, INDUSTRY UNION MADE PRODUCT, INDUSTRY GIRL, and additional marks for INDUSTRY with various design elements.  As in all trademark opposition cases involving likelihood of confusion, Opposer bore the burden of proof.

In analyzing the likelihood of confusion factors, the Board determined that the goods were, in part, identical.  Therefore, it also led to a presumption that the clothing products bearing the parties’ respective marks traveled in the same channels of trade.  The Board went on to state “the legal identity of the goods, close relationship of the goods and services, and their overlapping channels of trade and classes of purchasers not only weigh heavily in favor of finding a likelihood of confusion, but also reduce the degree of similarity between the marks necessary to find a likelihood of confusion.”  That being said, the Board concluded that in considering the parties’ marks in the entirety as to appearance, sound, connotation, and commercial impression, the “many differences between the marks outweigh their similarity.”

Moreover, the Board found that the Opposer’s INDUSTRY mark was weak, reasoning that:

the weaker an opposer’s mark, the closer an applicant’s mark can come without causing a likelihood of confusion and thereby invading what amounts to its comparatively narrower range of protection.

Based on the vast differences in the parties’ marks in their entireties, the weakness of the term “INDUSTRY” for clothing, and numerous references to third-party registrations containing the word “industry” in the record, the Board dismissed the opposition.

Practitioner’s Note:    The Board also ruled that the Opposer did not establish that it had a “family” of marks, as Opposer’s evidence as to consumer recognition and other factors necessary to establish a family of marks was weak.

A recent trademark opposition case before the U.S. Trademark Trial and Appeal Board presents a discussion of priority based on common law rights.

In Mazama Brewing Company, LLC v. Sumerian Brewing Company, LLC, Applicant sought registration of the mark HOPRUPTION DOUBLE IPA for beer in Class 32.  Opposer brought a motion for partial summary judgment based on likelihood of confusion with its mark HOP ERUPTION for beer; and false suggestion of a connection with Opposer.  Opposer assertion of common law trademark  rights was  based on its use of the HOP ERUPTION Mark dating back to May 2013.  Applicant’s filing date was February 8, 2017.

In support of its claim of common law priority, Opposer submitted various newspaper articles, invoices, social media mentions, customer testimonials, and label approvals for its HOP ERUPTION product dating back to 2013.  Opposer further argued that the parties goods were identical and traveled in the same channels of trade.  Opposer also claimed that purchasers of beer products are more likely to make impulse purchases, thereby making confusion more likely.   Moreover, since Applicant had to disclaim  “DOUBLE IPA” as being descriptive of beer, the comparison between the marks was HOPE ERUPTION and HOPRUPTION.  Opposer argued that this meant the both marks conveyed the same commercial impression.

Applicant argued that Opposer’s common law rights and evidence were limited to Oregon and to a lesser degree Washington state only.  Additionally, Applicant argued that any likelihood of confusion was diminished by the existence of numerous third-party marks for beer that contained the terms “hop” and/or “eruption.”

To establish priority of use, a party must show that its owns a mark or trade name previously used in the United States and not abandoned.  A plaintiff may prove prior use through either actual use or use analogous to trademark use, such as advertising brochures, newspaper publications, or websites which create a public awareness of the designation of the trademark as an identifying source.   Here, the Board concluded that Opposer met its burden on the issue of priority by showing prior use of the HOP ERUPTION Mark dating back to at least 2013.  With regard to the likelihood of confusion claim, the Board found that Opposer had not met its burden of demonstrating that there was no genuine issue of material fact regarding certain of the likelihood of confusion factors.  Accordingly, Opposer’s motion for summary judgment on the issue of likelihood of confusion was denied, even though the Board found that it had established its priority common law rights.

Practitioner’s note:   It is important for companies to establish documentary evidence of its trademark use as early as possible.  This is vitally important should its common law rights be contested at some time in the future.  Innovative companies such as Cognate assist brand owners in recording such marketplace evidence using blockchain technology.  By way of full disclosure, the author is an advisor to Cognate and its principals.

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.

Trademark oppositions in the United States are, on average, the most expensive in the world.  So what does it take to protect and enforce brands in other countries?

Over the coming months, some of the world’s leading trademark professionals will be sharing with us insight on the trademark opposition process in their own jurisdictions.   By doing so, American companies will be able to better gauge what is needed to protect their valuable brands on a global basis.  This series of useful posts will include brand enforcement guidance and tips such as:

  1.  Case assessment.   Prior to bringing a trademark opposition, it is important to first determine the strength of one’s own trademark rights.  This analysis depends, in part, on the legal requirements for priority, standing, and likelihood of confusion that exist in each country.
  2.  Duration and costs.   Some countries have streamlined opposition processes that save clients both time and money.  Others are similar to the U.S. system and could result in protracted litigation and increased fees.  We’ll find out which world trademark jurisdictions offer the most value for brand protection.
  3.  Dispute resolution alternatives.   INTA’s Trademark Mediators Network is a non-litigation alternative to contested trademark proceedings. Currently, there are over 150 approved INTA mediators across the globe, each with unique training and insight to help litigants achieve their brand protection goals in a collaborative manner.  We’ll hear from our experts whether mediation is used in trademark disputes in their countries, and if so, in what types of cases.

In addition to providing practical advice, each guest commentator will share his or her professional background and experience.  We hope that our world trademark opposition overview will assist U.S. companies and inhouse counsel to make informed decisions about their international trademark portfolios.

To international trademark associates:   If you would like to be considered as a guest column commentator, please contact the blog publisher.

The U.S. Trademark Trial and Appeal Board has disclosed first and second quarter filing and pendency statistics for 2018.   Year to date (YTD) statistics as compared to the same period in 2017 include the following:

U.S. Trademark Trial and Appeal Board filings

  • extensions of time to oppose:  9,498  (+2.7% YTD)
  • trademark oppositions: 3,211 (+4.3% YTD)
  • trademark cancellations: 1,143 (+8.8% YTD)
  • trademark appeals: 1,643 (+4% YTD)

Pendency of Proceedings  (commencement to completion processing times)

  • trial cases (average):  140.6 weeks (-10.6% YTD)
  • trial cases (median):  126 weeks (-14.9% YTD )
  • ACR trial cases (average): 112 weeks (-6.2% YTD)

Contested Motions

  • decisions issued:  535 (+8% YTD)
  • average pendency: 9 weeks (+15.4% YTD)
  • cases awaiting decision: 172 (+17% YTD)

Of note is the increase in trademark cancellation proceedings as well as trademark oppositions.  This may be a sign of greater brand enforcement efforts by companies.  At the same time, there are mixed performance trends within the TTAB itself.  While the pendency of proceedings has decreased, the average pendency of contested motions has increased.   One reason may be due to the inability of counsel to fully cooperate in discovery disputes, with an increase in contested motions being an unfortunate result.

TTAB filing and performance data for 2015 and 2016 may be found here.

Practitioner’s Note:   The importance of cooperation with opposing counsel in the prosecution or defense of TTAB proceedings should not be overlooked.   Where antagonism and lack of communication are the norm, increased client expenses and unnecessary motion practice often follow.  This can have a direct impact on the  risk and costs associated with trademark opposition proceedings.