trademark cancellation

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%)

Conclusions

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 motion for summary judgment in a trademark opposition or trademark cancellation proceeding before the Trademark Trial and Appeal Board (TTAB) can be an effective strategy.  Summary judgment motions are often are filed near or at the end of discovery, prior to the trial phase of the case.  Sometimes, summary judgment motions are brought even earlier in the proceeding.  If the movant is successful, it can save the moving party the time and expense of a full trial on the merits.  Equally important is the possibility that it could obtain a conclusive ruling by the Board sooner — sometimes even a year or more.   This potential savings in the time and expense of litigation can be appealing.

Yet a summary judgment motion in a trademark opposition or trademark cancellation proceeding is not without risk.  Due to its high burden of proof, a summary judgment motion is granted less than 50% of the time.  This alone could be a deterrent for companies seeking such expedited relief.   That being said, the facts of each case are unique.   Therefore, the facts and law should be weighed carefully when considering filing a motion for summary judgment.

Here are some things to consider when considering the merits of a summary judgment motion:

   1.   Legal standard:  Summary judgment is appropriate where the moving party can show the absence of any genuine dispute as to any material fact, and that it entitled to judgment as a matter of law.  Fed.R.Civ.P. 56.  A party either asserting or refuting that a material fact exists must do so by citing to admissible supporting evidence that is properly made of record.

   2.  Standing.   A party’s standing to bring or maintain a trademark opposition or cancellation proceeding is a threshold issue that an opposer or petitioner must meet in every inter partes case before the Board.  The plaintiff must demonstrate that it has a real interest in the proceeding beyond that of a mere intermeddler and that it has a reasonable basis and belief that it will be damaged.

   3.  Priority.   In cases that are filed on the grounds of a likelihood of confusion pursuant to Section 2(d) of the Trademark Act and most other statutory grounds, the movant must establish that it either has a preexisiting trademark registration that it deems to be confusingly similar to the non-movant’s mark or proprietary prior common law use.

   4.  Proving the merits.   In Section 2(d) likelihood of confusion cases,  the plaintiff must establish the presence of a likelihood of confusion between the parties’ trademarks pursuant to the thirteen factors set forth in the case of In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).   Some of the primary Dupont factors include similarity of the marks, similarity of the goods or services, similarity of the trade channels, actual confusion, and the fame of the prior mark.

   5.  Opposition to Motion.  The non-moving party should file an opposition to the motion for summary judgment.  The opposition should set forth the existence of any and all genuine issues of material fact that would make granting the motion improper.   As with the moving party, the opposing party must establish the existence of genuine issues of material fact through properly admissible evidence, such as declarations, documents, admissions, interrogatory answers, and deposition testimony.

   6.  Reply Brief.   After the non-moving party files its opposition to the motion, the moving party has the opportunity to file a reply brief, refuting any factual or legal contentions that are made by the non-movant in its opposition papers.

   7.  Judgment.   After all the moving papers have been submitted, the Board will render a written opinion.  Sometimes the Board will summarily deny the motion; most often it will include a written opinion of several pages that lays out the relevant record, legal standards, burdens of proof, and its decision.  The Board, in its discretion, may grant the motion in its entirety, deny it in its entirety, or grant it in part and deny it in part.   Any claim for relief that is not granted and could be dispositive to the outcome of the case will remain for trial.

Client Advisory.   If you are considering file a motion for summary judgment or have been served with a motion for summary judgment, it is advisable to discuss all options with your attorney or seek out other qualified legal advice.

Trademark image

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 opposition proceedings are civil litigations before the U.S. Trademark Trial and Appeal Board (TTAB).  Companies that wish to enforce their trademark rights through TTAB proceedings should take into account the following pre-filing considerations:

  1.  Standing. Standing is a procedural requirement for all potential opposers.  To establish standing to bring or maintain a trademark opposition, the Opposer must allege a real interest in the outcome of the proceeding together with a claim that it will be damaged by the Applicant’s mark.
  2.   Priority.  In cases where the Opposer is claiming that the offending application will cause a likelihood of confusion with the Opposer’s trademark, the Opposer must allege that is has senior rights. This may be accomplished by showing ownership of a prior U.S. trademark registration or by alleging common law rights that predate the applicant’s first use date or filing date.
  3.  Ownership.  The Opposer should make sure that it is the owner of the senior trademark and file the opposition under its corporate name.   If a related company or licensee is using the trademark, a review of all agreements should be made prior to filing a notice of opposition to ensure rightful ownership and proper chain of title.   Licensees generally do not have standing to bring a trademark opposition proceeding unless specifically governed by a trademark license agreement.
  4.   Jurisdiction.  The TTAB has jurisdiction over the right to register a trademark only.   Even if the Opposer prevails, the TTAB does not have any authority to order the Applicant to cease use of its trademark.  Nor does it have the right to award monetary damages or attorney’s fees.  Only Article III courts such as U.S. District Court has the jurisdiction to enjoin a party’s right to use its trademark in commerce or to award monetary relief to the prevailing party.
  5.  Proper use.  Under U.S. law, trademark rights are based on use.  The fact that an Opposer is the owner of a preexisting trademark registration does not mean that it automatically has superior rights to those of the Applicant.  The Applicant has the right to seek evidence that the Opposer is currently using Opposer’s trademark on all of the goods and services set forth in its pleaded trademark registration.  If the Opposer had never commence use of its mark on some of the goods, or if it has abandoned use on some or all of the goods, then the Opposer’s pleaded registrations are subject to cancellation.
  6.  Likelihood of confusion. The test for whether a trademark applicant’s mark is confusingly similar to a senior owner’s mark has been set forth is a 13-part test known as the Dupont  While no one factor is dispositive, some of the key factors that the TTAB looks at to determine if a likelihood of confusion may exist are (a) similarity of the marks; (b) similarity of the goods or services; and (c) similarity of the parties’ trade channels.

The above checklist is not inclusive.   Other legal and factual considerations should be weighed prior to bringing a notice of opposition.  Such factors include a discussion of preferred business goals, and how to achieve them without the need of a full-trial on the merits.   Often, these goals can be achieved with the assistance of an experienced trademark opposition attorney.

Editor’s Note:   To discuss your trademark opposition or brand enforcement strategy, please contact James Hastings.

More than 5,000 trademark oppositions are filed every year.  One of the grounds for bringing a trademark opposition is that the application is likely to cause confusion with the Opposer’s preexisting trademark.  Yet many trademark opposers are unsuccessful and have their case dismissed.  So prior to filing a notice of opposition, it is advisable to be aware of common mistakes that beset litigants before the US Trademark Trial and Appeal Board.

Mistake #1:  Failure to know TTAB rules.   Procedures for trademark opposition proceedings are set forth in the Trademark Board Manual of Procedure (TBMP).  The failure to follow the strict rules of the TTAB that are contained in the TBMP could result in dismissal of a case or otherwise severely prejudice a litigant’s rights.

Mistake #2.   Failure to assess the case.   Many trademark owners engage in robust trademark monitoring.  This includes filing numerous trademark oppositions against trademark applications deemed to be confusingly similar.  While this tactic can prove successful in certain cases, it could be disastrous where the Opposer fails to adequately research the law and how it may apply to the specific facts of the case.  The lesson here is to assess your strengths and weaknesses before filing a notice of opposition; not after.  No two cases are alike.

Mistake #3.   Overconfidence.   This error in strategic judgment has gotten many a trademark opposer in trouble.   Should the Applicant vigorously defend the opposition and expose fatal weaknesses in the Opposer’s case, the Opposer may be faced with the undesirable choice of either proceeding with the expense of the litigation, or, even worse, face a negative ruling.  This could result in a weakening of the brand owner’s future brand enforcement efforts or even cancellation of its own trademark registrations.

Trademark Management Recommendations:   Brand owners should create and implement a written trademark monitoring and enforcement plan.   Factors to consider are (1) what trademarks should be monitored and enforced; and (2) under what circumstances should third-party applications be opposed.   By creating a written brand enforcement process and updating it once a year, companies can help mitigate their risks and strengthen their trademark portfolios. 

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.

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.

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. 

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.