CANCELLATION STEPS

(for a USPTO registered trademark)

Trademarks that issued may be canceled by anyone who has standing and grounds. Any ground that negates the defendant's right to registration may be raised for cancellation.


Standing is why a person (or entity) believes it is or will be damaged by the registration sought to be canceled.  At the initial pleading stage, all that is required is that a plaintiff allege facts sufficient to show a “real interest” in the proceeding, and a “reasonable basis for its belief of damage." To plead a "real interest," plaintiff must allege a "direct and personal stake" in the outcome of the proceeding. The allegations in support of plaintiff's belief of damage must have a reasonable basis "in fact." (See Trademark Trial and Appeal Board Manual of Procedure (TBMP) 309.03(b) Standing for case definitions of “real interest,” “direct and personal stake,” “reasonable basis,” and “in fact.”)


Potential registrars of merely descriptive terms may be opposed and damaged assumed when the mark sought to be registered is descriptive of goods and opposer has a sufficient real interest in using the same descriptive words in its business. DeWalt, Inc. v. Magna Power Tool Corp., 289 F.2d 656, 129 USPQ 275, 280 (CCPA 1961).


Where registration is being cancelled on the ground that applicant's mark, as applied to its goods and/or services, is merely descriptive of them, registrant may take the position that its mark is not merely descriptive, and, alternatively, assert a claim [with proof], under the provisions of Section 2(f) of the Act, 15 U.S.C. § 1052(f), that its mark has become distinctive [acquired distinctiveness] of its goods and/or services in commerce.  (See Trademark Trial and Appeal Board Manual of Procedure (TBMP) 1215 Alternative Positions.)



WHAT ARE THE STEPS IN A CANCELLATION PROCEEDING?

TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP)

June 2013


TBMP 701: [  ]

On receipt of a properly filed notice of opposition or petition to cancel (or at the time described in 37 CFR § 2.92 for an interference, see TBMP § 1003, or 37 CFR § 2.99(c) for a concurrent use proceeding which is not based on a court decision or a prior Board decision, see TBMP § 1106.04), the Board sends out a notice advising the parties of the institution of the proceeding. The notice includes a trial order setting deadlines for the answer, discovery conference, initial and expert disclosures, discovery, and each party’s required pretrial disclosures, and assigning each party's time for taking testimony and introducing other evidence in the case. [Note 1.] See TBMP § 310.01 (oppositions and cancellations); TBMP § 1007 (interferences) and TBMP § 1106.04 (concurrent use proceedings). See also TBMP § 403.01.


In the trial order, the Board schedules a 30-day testimony period for the plaintiff to present its case in chief, a 30-day testimony period for the defendant to present its case and to meet the case of the plaintiff, and a 15-day testimony period for the plaintiff to present rebuttal evidence. [Note 2.] The plaintiff's period for presenting its case in chief is scheduled to open 60 days after the close of the discovery period; the defendant's testimony period is scheduled to open 30 days after the close of the plaintiff's testimony period in chief; and the plaintiff's rebuttal testimony period is scheduled to open 30 days after the close of the defendant's testimony period. [Note 3.] For cases commenced on or after November 1, 2007, the trial order also schedules the time for pretrial disclosures of witnesses: each party must make pretrial disclosures no later than fifteen days prior to the opening of its testimony period. [Note 4.] . . .

NOTES:

1. See 37 CFR § 2.120(a) and 37 CFR § 2.121.

2. See 37 CFR § 2.121(b)(1) and 37 CFR § 2.121(c).

3. See Stagecoach Properties, Inc. v. Wells Fargo & Co., 199 USPQ 341, 356 (TTAB 1978) (thirty-day interval between each testimony period), aff'd, 685 F.2d 302, 216 USPQ 480 (9th Cir. 1982).

4. See 37 CFR § 2.121(e). . . .


Many cancellation submissions are handled entirely through Electronic System for Trademark Trials and Appeals (ESTTA). Note: Remember to file your proof of service!


  1.  Petition to Cancel is filed by Plaintiff  (see suggested format for cancellation)
  2. Defendant (registrant) Answers within 40 days
  1.  Discovery Conference between parties (the parties are required to conference in person, by telephone, or by any other means on which they may agree)
  1. Discovery Opens
  2. Initial Disclosures Due
  3. Expert Disclosures Due
  4.  Discovery Closes
  5.  Plaintiff's Pretrial Disclosures
  6.  Plaintiff's 30-day Trial Period-Brief on the Merits submitted
  7.  Defendant's Pretrial Disclosures
  8. Defendant's 30-day Trial Period-Rebuttal on Brief on the Merits submitted
  9.  Plaintiff's Rebuttal Disclosures
  10. Plaintiff's 15-day Rebuttal Period
  11.  Board's Decision




Examples of Grounds for [Refusal,] Opposition and Cancellation of a Trademark

(from Trademark Trial and Appeal Board Manual of Procedure (TBMP) 309.03(c) Grounds)



(1) Section 2(d) of the Act, 15 U.S.C. §1052(d): That defendant's mark so resembles a mark registered in the Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods or services of the defendant, to cause confusion [likelihood of confusion], or to cause mistake, or to deceive.

See, e.g., Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); Shen Manufacturing Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004); In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); Opryland USA Inc. v. The Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1473 (Fed. Cir. 1992); and Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002). See also First Niagara Insurance Brokers Inc. v. First Niagara Financial Group Inc., 476 F.3d 867, 81 USPQ2d 1375, 1378 (Fed. Cir. 2007) (claim of prior intrastate use); Brown Shoe Co. v. Robbins, 90 USPQ2d 1752, 1756 (TTAB 2009) (doctrine of foreign equivalents inapplicable but likelihood of confusion found); Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1023 (TTAB 2009) (earliest date respondent may rely upon is the filing date of its underlying application in absence of evidence of earlier use; petitioner must show earlier common law use in absence of registration); Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581 (TTAB 2008) (dissimilarity of marks controlling issue in likelihood of confusion analysis); Apple Computer v. TVNET.net Inc., 90 USPQ2d 1393 (TTAB 2007); Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1959 (TTAB 2008) (although opposer failed to make its registrations of record, its burden is to demonstrate that it owns a trademark, which was used prior to applicant’s mark, and not abandoned); Black & Decker Corp. v. Emerson Electric Co., 84 USPQ2d 1482, 1490 (TTAB 2007) (family of marks); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1107 (TTAB 2007) (determination of likelihood of confusion based on an analysis of all facts in evidence); Christian Broadcasting Network Inc. v. ABS-CBN International, 84 USPQ2d 1560, 1565 (TTAB 2007) (several factors considered); Fort James Operating Co. v. Royal Paper Converting Inc., 83 USPQ2d 1624 (TTAB 2007) (design marks compared); Miss Universe L.P., v. Community Marketing, Inc., 82 USPQ2d 1562 (TTAB 2007) (“Our likelihood of confusion determination under Section 2(d) is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue (the du Pont factors)”); and Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1113 (TTAB 2007) (doubt resolved in favor of prior user).


(2) The grounds specified in Section 2(e) of the Act, 15 U.S.C. §1052(e); for example, that defendant's mark, when used on or in connection with the goods or services of the defendant, is merely descriptive or deceptively misdescriptive of them,

See Trademark Act § 2(e)(1), 15 U.S.C. § 1052(e)(1). See also, e.g., The Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357, 57 USPQ2d 1720 (Fed. Cir. 2001) (deceptive misdescriptiveness) and Callaway Vineyard & Winery v. Endsley Capital Group, Inc., 63 USPQ2d 1919 (TTAB 2002) (mere descriptiveness). Regarding claims under Trademark Act § 2(f), 15 U.S.C. § 1052(f), see Cold War Museum Inc. v. Cold War Air Museum Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009) (in cancellation proceeding, presumption of validity of registration under Trademark Act § 2(f) includes presumption of acquired distinctiveness, and party seeking cancellation must overcome this presumption by preponderance of evidence; “burden” to prove that mark has acquired distinctiveness shifts to registrant only after plaintiff establishes prima facie case that mark has not acquired distinctiveness); Yamaha International Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988) (in opposing a claim under Trademark Act § 2(f), opposer has initial burden of challenging or rebutting applicant’s evidence of distinctiveness); Target Brands Inc. v. Hughes, 85 USPQ2d 1676, 1680 (TTAB 2007) (ultimate burden of persuasion under Trademark Act § 2(f) rests with applicant); and Kellogg Co. v. General Mills Inc., 82 USPQ2d 1766, 1768 (TTAB 2007) (mere descriptiveness; whether claim under Trademark Act § 2(f) is sufficient).


or that defendant's mark is primarily geographically descriptive

See Trademark Act § 2(e)(2), 15 U.S.C. § 1052(e)(2). See also, e.g., Grand Canyon West Ranch LLC v. Hualapai Tribe, 88 USPQ2d 1501, 1504 (TTAB 2008) (whether mark is descriptive and/or primarily geographically descriptive, applicant has shown acquired distinctiveness); University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385 (TTAB 1994).


or primarily geographically deceptively misdescriptive of them;

See Trademark Act § 2(e)(3), 15 U.S.C. § 1052(e)(3). See also In re California Innovations, Inc., 329 F.3d 1334, 66 USPQ2d 1853 (Fed. Cir. 2003) (the test for determining whether a mark is geographically deceptive under Trademark Act § 2(a), 15 U.S.C. § 1052(a) is the same as determining whether a mark is primarily geographically deceptively misdescriptive under Trademark Act § 2(e)(3), 15 U.S.C. § 1052(e)(3)); In re Save Venice New York, Inc., 259 F.3d 1346, 59 USPQ2d 1778 (Fed. Cir. 2001); Corporacion Habanos S.A. v. Anncas Inc., 88 USPQ2d 1785 (TTAB 2008) (primarily geographically deceptively misdescriptive and deceptive claims); United States Playing Card Co., v. Harbro, LLC, 81 USPQ2d 1537 (TTAB 2006) (addressing deceptiveness of a geographic term); and In re Wada, 48 USPQ2d 1689 (TTAB 1998), aff'd, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999).


and that defendant's mark is primarily merely a surname.

See Trademark Act § 2(e)(4), 15 U.S.C. § 1052(e)(4). See also, e.g., Michael S. Sachs Inc. v. Cordon Art B.V., 56 USPQ2d 1132 (TTAB 2000); Allied Mills, Inc. v. Kal Kan Foods, Inc., 203 USPQ 390, 391-92 (TTAB 1979); and Food Specialty Co. v. Carnation Co., 170 USPQ522, 523 (TTAB 1971). Cf. In re Rath, 402 F.3d 1207, 74 USPQ2d 1174 (Fed. Cir. 2005); and In re Piano Factory Group Inc., 85 USPQ2d 1522 (TTAB 2007).


or that defendant’s mark comprises any matter that, as a whole, is de jure functional; or if not de jure functional, that the product design has not acquired distinctiveness.

See Trademark Act § 2(e)(5), 15 U.S.C. § 1052(e)(5); TrafFix Devices Inc. v. Marketing Displays Inc., 523 U.S. 23, 58 USPQ2d 1001, 1006 (2001); and Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 34 USPQ2d 1161 (1995). See also, e.g., Valu Engineering Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422 (Fed. Cir. 2002); Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, (TTAB 2009) (product configuration); and M-5 Steel Mfg, Inc. v. O'Hagin's Inc., 61 USPQ2d 1086 (TTAB 2001). Cf. Duramax Marine, LLC v. R.W. Fernstrum & Company, 80 USPQ2d 1780 (TTAB 2006) (prohibition on the registration of functional marks does not extend to registration of two dimensional design mark for custom manufacturing services).


(3) The grounds specified in Section 2(a) of the Act, 15 U.S.C. §1052(a); for example, that defendant's mark is geographically deceptive,

See, e.g., Consorzio del Prosciutto di Parma v. Parma Sausage Products, Inc., 23 USPQ2d 1894 (TTAB 1992) (mark's geographic deceptiveness must be established as of the time the registration issues). Cf. Corporacion Habanos S.A. v. Anncas Inc., 88 USPQ2d 1785 (TTAB 2008) (Board declines to consider geographically deceptive claim under Trademark Act § 2(a), 15 U.S.C. § 1052(a)); United States Playing Card Co., v. Harbro, LLC, 81 USPQ2d 1537 (TTAB 2006) (addressing deceptiveness of a geographic term under the ambit of Trademark Act § 2(e)(3), 15 U.S.C. § 1052(e)(3) rather than Trademark Act § 2(a), 15 U.S.C. § 1052(a), citing In re California Innovations Inc., 329 F.3d 1334, 66 USPQ2d 1853, 1856 (Fed. Cir. 2003) (“The amended Lanham Act gives geographically deceptively misdescriptive marks the same treatment as geographically deceptive marks under § 1052(a).”); K-Swiss Inc. v. Swiss Army Brands Inc., 58 USPQ2d 1540, 1543 (TTAB 2001) (can be cancelled if a registrant, through its own actions, causes its mark to become geographically deceptive subsequent to the issuance of the registration).


that defendant's mark disparages members of a particular group,

See, e.g., In re Lebanese Arak Corp., 94 USPQ2d 1215 (TTAB 2010) (religious affiliation); In re Heeb Media, LLC, 89 USPQ2d 1071 (TTAB 2008) (religious affiliation); Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581 (TTAB 2008) (disparagement); In re Squaw Valley Development Co., 80 USPQ2d 1264 (TTAB 2006) (disparagement); McDermott v. San Francisco Womens Motorcycle Contingent, 81 USPQ2d 1212 (TTAB 2006); aff’d unpub’d, 240 Fed.Appx. 865 (Fed. Cir. 2007), cert. denied, 552 U.S.1109 (2008) (while individual male citizen sufficiently alleged a “real interest” in the proceedings, he failed to properly allege “belief of damage,” as he does not inherently possess an immutable trait directly implicated by the mark or allege that others share his belief of damage); Boswell v. Mavety Media Group Ltd., 52 USPQ2d 1600 (TTAB 1999) (women in general and African American women in particular); Order Sons of Italy in America v. Memphis Mafia Inc., 52 USPQ2d 1364 (TTAB 1999) (members of plaintiff's Order and Italian- Americans in general); and Harjo v. Pro-Football Inc., 50 USPQ2d 1705, 1740-48 (TTAB 1999), rev’d, 284 F. Supp. 2d 96, 125, 68 USPQ2d 1225, 1248 (D.D.C. 2003), remanded, 415 F.3d 44, 75 USPQ2d 1525 (D.C. Cir. 2005), and aff’d, 565 F.3d 880, 90 USPQ2d 1593 (D.C. Cir. 2009), cert. denied, 130 S. Ct. 631 (2009) (cancellation action brought by Native Americans on grounds of disparagement barred by laches).


that defendant's mark consists of or comprises scandalous matter,

See, e.g., Corporacion Habanos S.A. v. Anncas Inc., 88 USPQ2d 1785 (TTAB 2008)(deceptiveness); Boston Red Sox Baseball Club Limited Partnership v. Sherman, 88 USPQ2d 1581, 1588 (TTAB 2008); In re Boulevard Entertainment, Inc., 334 F.3d 1336, 67 USPQ2d 1475 (Fed. Cir. 2003) (use of dictionary evidence to determine whether mark is scandalous);

and In re Mavety Media Group, Ltd., 33 F.3d 1367, 31 USPQ2d 1923 (Fed. Cir. 1994) (analyzing mark in terms of “vulgarity”). See also Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999) (standing to oppose on Trademark Act § 2(a), 15 U.S.C. § 1052(a) grounds); In re South Park Cigar, Inc., 82 USPQ2d 1507 (TTAB 2007) (deception involving geographical mark); In re Red Bull GmbH, 78 USPQ2d 1375 (TTAB 2006) (scandalous mark); In re Wilcher Corp., 40 USPQ2d 1929 (TTAB 1996) (design mark scandalous); and In re Old Glory Condom Corp., 26 USPQ2d 1216, 1220 (TTAB 1993) (design mark not scandalous). Cf. McDermott v. San Francisco Womens Motorcycle Contingent, 81 USPQ2d 1212, 1214 (TTAB 2006), aff’d unpub’d, 240 Fed.Appx. 865 (Fed. Cir. 2007), cert. denied, 552 U.S. 1109 (2008) (authority of Trademark Act § 2(a), 15 U.S.C. § 1052(a) does not extend to goods or services that may be viewed as scandalous or immoral in nature).


or that defendant's mark falsely suggests a connection with plaintiff's name or identity

See, e.g., University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co. Inc., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.1983); Boston Red Sox Baseball Club Limited Partnership v. Sherman, 88 USPQ2d 1581, 1593 (TTAB 2008); Internet Inc. v. Corporation for National Research Initiatives, 38 USPQ2d 1435 (TTAB 1996); Greyhound Corp. v. Both Worlds Inc., 6

USPQ2d 1635 (TTAB 1988); and Buffett v. Chi Chi's, Inc., 226 USPQ 428 (TTAB 1985).


or that defendant’s mark is a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and was first used on or in connection with wines or spirits by the applicant on or after January 1, 1996.

See Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006) (certification mark recognized as a geographical indication). Cf. In re Spirits International N.V., 86 USPQ2d 1078, 1080 n.2 (TTAB 2008) (refusal based on “deceptiveness” provision of

Trademark Act § 2(a), 15 U.S.C. § 1052(a) and not that the mark is a geographical indication); and In re Wada, 48 USPQ2d 1689, 1692 n.7 (TTAB 1998) (disclaimer of geographical indication cannot obviate a Trademark Act § 2(a), 15 U.S.C. § 1052(a) refusal).


(4) That there was no bona fide use of defendant's mark in commerce prior to the filing of the use-based application for its registration under Section 1(a) of the Act, 15 U.S.C. §1051(a)

See, e.g., International Mobile Machines Corp. v. International Telephone and Telegraph Corp., 800 F.2d 1118, 231 USPQ 142 (Fed. Cir. 1986); Avakoff v. Southern Pacific Co., 765 F.2d 1097, 226 USPQ 435 (Fed. Cir. 1985); Paramount Pictures Corp. v. White, 31 USPQ 1768 (TTAB 1994) (“use in commerce” involves the bona fide use of a mark in the ordinary

course of trade, and not made merely to reserve a right in a mark), aff'd unpub'd, 108 F.3d 1392 (Fed. Cir. 1997); Nutrasweet Company v. K & S Foods Inc., 4 USPQ2d 1964 (TTAB 1987); Pennwalt Corp. v. Sentry Chemical Co., 219 USPQ 542, 558 (TTAB 1983); and Bonaventure Associates v. Westin Hotel Co., 218 USPQ 537, 543 (TTAB 1983). Cf. Sinclair Oil Corp. v.

Kendrick, 85 USPQ2d 1032, 1033 (TTAB 2007) (opposer’s nonuse claim dismissed as moot upon Board’s acceptance of applicant’s amendment of the filing basis of its application from Trademark Act § 1(a) to 1(b), 15 U.S.C. § 1051(a) to (b)); and CarX Service Systems, Inc. V. Exxon Corp., 215 USPQ 345, 351 (TTAB 1982) (plaintiff must plead and prove that there was no use prior to filing date; mere claim that dates of use are incorrect does not state a claim of action).


(5) That defendant did not have a bona fide intent to use the mark in connection with the identified goods/services as of the filing date of the application.

See, e.g., Honda Motor Co., Ltd. v. Friedrich Winkelmann, 90 USPQ2d 1660 (TTAB 2009) (lack of bona fide intent to use); Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1587 (TTAB 2008) (lack of bona fide intent to use); Lane Ltd. v. Jackson

International Trading Co., 33 USPQ2d 1351, 1352 (TTAB 1994); and Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1504 (TTAB 1993). Cf. Wet Seal Inc. v. FD Management Inc., 82 USPQ2d 1629, 1643 (TTAB 2007) (capacity to market and /or manufacture goods, having produced them in the past under different marks, rebuts claim that

applicant lacked bona fide intent to use).


(6) That defendant’s mark is a mere background design that does not function as a mark separate and apart from the words displayed thereon.

See, e.g., In re Grande Cheese Co., 2 USPQ2d 1447 (TTAB 1986); General Foods Corp. v. Ito Yokado Co., Ltd., 219 USPQ 822, 825 (TTAB 1983), aff'd unpub'd, slip. op. 84-517 (Fed. Cir. 1984).


(7) That defendant is not (and was not, at the time of the filing of its application for or that registration) the rightful owner of the registered mark.

See, e.g., Ballet Tech Foundation, Inc. v. The Joyce Theater Foundation, Inc., 89 USPQ2d 1262 (TTAB 2008); Anheuser-Busch Inc. v. The Florists Association of Greater Cleveland Inc., 29 USPQ2d 1146 (TTAB 1993); Treadwell's Drifters Inc. v. Marshak, 18 USPQ2d 1318, 1320 (TTAB 1990); and Kemin Industries, Inc. v. Watkins Products, Inc., 192 USPQ 327, 328 (TTAB 1976). Cf. e.g., Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464

(TTAB 1993) recon. den., 36 USPQ2d 1328 (TTAB 1994) (where opposer was asserting that applicant's mark is a descriptive term which cannot be owned exclusively by anyone, rather than alleging that someone other than applicant is the owner of the term as a mark).


(8) That defendant's mark, consisting of a particular color combination applied to its goods, is ornamental and has not become distinctive as an indication of the source of defendant's goods,

See, e.g., Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161 (1995); Nasalok Coating Corp. v. Nylok Corp., 522 F.3d 1320, 86 USPQ2d 1369 (Fed. Cir. 2008); Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir.1994), In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417, (Fed. Cir.1985); Goodyear

Tire & Rubber Co. v. Vogue Tyre & Rubber Co., 47 USPQ2d 1748 (TTAB 1998); and Kassnar Imports v. Plastilite Corp., 180 USPQ 156, 157 (TTAB 1973), aff'd, 508 F.2d 824, 184 USPQ 348, 350 (CCPA 1975).


or that defendant’s mark, consisting of a particular sound applied to its goods, is not inherently distinctive and has not acquired distinctiveness.


See Trademark Act § 1, Trademark Act § 2 and Trademark Act § 45, 15 U.S.C. § 1051, 15 U.S.C. § 1052 and 15 U.S.C. § 1127; Nextel Communications Inc. v. Motorola Inc., 91 USPQ2d 1393 (TTAB 2009) (“chirp” sound). Cf. In re Vertex Group LLC, 89 USPQ2d 1694, 1700 (TTAB 2009) (registration on the Principal Register of the sound emitted by applicant's

product in its normal course of operation only available on a showing of acquired distinctiveness).


(9) That the term for which registration is sought or for which registration has been obtained has not been used as a trademark or service mark.

See, e.g., Aycock Engineering, Inc. v. Airflite, Inc., 560 F.3d 1350, 90 USPQ2d 1301, 1309 n.12 (Fed. Cir. 2009) (registration on Supplemental Register never becomes immune from threat of invalidation on grounds that mark was not used prior to filing date); Anheuser-Busch Inc. v. The Florists Association of Greater Cleveland, Inc., 29 USPQ2d 1146, 1160 (TTAB

1993) (allegation that slogan was used as mere advertising and not as a trademark); and Marshall Field & Co. v. Mrs. Fields Cookies, 11 USPQ2d 1355 (TTAB 1989).


(10) That defendant's mark represents multiple marks in a single application (or registration) ("phantom mark").

See, e.g., Cineplex Odeon Corp. v. Fred Wehrenberg Circuit of Theatres, 56 USPQ2d 1538 (TTAB 2000). See also In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812-1813 (Fed. Cir. 2001); In re International Flavors & Fragrances Inc., 47 USPQ2d 1314 (TTAB 1998), aff'd, 183 F.3d 1361, 51 USPQ2d 1513 (Fed. Cir. 1999).


(11) That defendant's mark has been abandoned due to nonuse;

Trademark Act § 45, 15 U.SC. § 1127. See, e.g., Linville v. Rivard, 41 USPQ2d 1731 (TTAB 1996), aff’d,133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir. 1998); Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390 (Fed. Cir. 1990); and Auburn Farms, Inc. v. McKee Foods Corp., 51 USPQ2d 1439 (TTAB 1998). Cf. General Motors Corp. V. Aristide & Co., Antiquaire de Marques, 87 USPQ2d 1179 (TTAB 2008) (plaintiff could not

prove priority because it abandoned mark with no intent to resume use prior to use by defendant); and Otto International Inc. v. Otto Kern GmbH, 83 USPQ2d 1861, 1863 (TTAB 2007) (plaintiff must allege ultimate facts pertaining to the alleged abandonment).


or due to a course of conduct that has caused the mark to lose significance as an indication of source.

Trademark Act § 45, 15 U.S.C. § 1127. See, e.g., Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, (TTAB 2009) (failure to police third party use of marks); Ballet Tech Foundation, Inc. v. The Joyce Theater Foundation, Inc., 89 USPQ2d

1262 (TTAB 2008) (use of marks pursuant to implied license inures to benefit of licensor); Tea Board of India v. The Republic of Tea, Inc. 80 USPQ2d 1881 (TTAB 2006); and Woodstock's Enterprises Inc. v. Woodstock's Enterprises Inc., 43 USPQ2d 1440 (TTAB 1997), aff’d, 152 F.3d 942 (Fed. Cir. Mar. 5, 1998).


(12) That defendant's mark consists of or comprises the name of a particular living individual without the individual's consent.

See Trademark Act § 2(c), 15 U.S.C. § 1052(c). See also Chester L. Krause v. Krause Publications, Inc., 76 USPQ2d 1904 (TTAB 2005), aff’d slip. op. 2007-1364 (Fed. Cir. Dec. 7, 2007); Ross v. Analytical Technology, Inc., 51 USPQ2d 1269 (TTAB 1999) (plaintiff must

establish that the “name,” as used on the goods or services, points uniquely to plaintiff as a “particular living individual”); and Ceccato v. Manifattura Lane Gaetano Marzotto & Figli S.p.A., 32 USPQ2d 1192 (TTAB 1994) (party asserting Trademark Act § 2(c), 15 U.S.C. § 1052(c) ground must have cognizable or proprietary right in the name). Cf. Societe Civile Des Domaines Dourthe Freres v. S.A. Consortium Vinicole De Bordeaux Et De La Gironde, 6 USPQ2d 1205 (TTAB 1988) (Trademark Act § 2(c), 15 U.S.C. § 1052(c) does not apply to

family surnames).


(13) That defendant's product design is generic.

See Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, (TTAB 2009); Sunrise Jewelry Manufacturing Corp. v. Fred, S.A., 175 F.3d 1322, 50 USPQ2d 1532 (Fed. Cir. 1999) (the term “generic name” as used in Trademark Act § 14(3), 15 U.S.C. § 1064(3) includes trade dress such as product design or configuration).


(14) That defendant's mark would dilute the distinctive quality of plaintiff's famous mark.

See Trademark Act § 13(a) and Trademark Act § 14, 15 U.S.C. § 1063(a) and 15 U.S.C. § 1064; Toro Co. v. ToroHead Inc., 61 USPQ2d 1164 (TTAB 2001). See also Trademark Act § 43(c), 15 U.S.C. § 1125(c); National Pork Board and National Pork Producers Council v. Supreme Lobster and Seafood Company, 96 USPQ2d 1479 (TTAB 2010) (commodity promotion slogan dilution by blurring); Coach Services, Inc. V. Triumph Learning LLC; 96 USPQ2d 1479 (TTAB 2010) (dilution by blurring and tarnishment); Citigroup Inc. v. Capital City Bank Group Inc., 94 USPQ2d 1645, 1649 (TTAB 2010) (party alleging fame must show

that mark became famous before applicant’s use of challenged mark); Demon International LC v. Lynch, 86 USPQ2d 1058, 1059-1060 (TTAB 2008) (dilution claim in pleading must include an allegation that opposer's mark at issue is famous); Moseley v. V Secret Catalogue Inc., 537 US 418, 65 USPQ2d 1801 (2003); Trek Bicycle Corp. v. StyleTrek Ltd., 64 USPQ2d 1540,

1542 (TTAB 2001) (dilution pleading legally insufficient where opposer failed to allege that its mark became famous before constructive use date of involved intent-to-use application); Toro Co. v. ToroHead, Inc., 61 USPQ2d 1164, 1174 n.9 (TTAB 2001); and Polaris Industries Inc. V. DC Comics, 59 USPQ2d 1798 (TTAB 2000); and, e.g., Enterprise Rent-A-Car Co. v.

Advantage Rent-A-Car, Inc., 62 USPQ2d 1857 (TTAB 2002), aff'd, 300 F.3d 1333, 66 USPQ2d 1811 (Fed. Cir. 2003). But see Fiat Group Automobiles, S.p.A. v. ISM, Inc., 94 USPQ2d 1111 (TTAB 2010) (the “well known mark” doctrine does not constitute a basis for

pleading dilution in the United States, absent a specific pleading of intent to use, the filing of an application for registration, and some basis for concluding that recognition of the mark in the United States is sufficiently widespread as to create an association of the mark with particular products or services, even if the source thereof is anonymous and even if the products or services are not available in the United States).


(15) That defendant has used its mark so as to misrepresent the source of its goods or services.

See Bayer Consumer Care AG v. Belmora LLC, 90 USPQ2d 1587 (TTAB 2009) (motion to dismiss misrepresentation of source claim denied); Otto International Inc. v. Otto Kern GmbH, 83 USPQ2d 1861, 1863 (TTAB 2007) (pleading of misrepresentation of source must be supported by allegations of blatant misuse of the mark by respondent in a manner calculated to trade on the goodwill and reputation of petitioner); and The E.E. Dickinson Co. v. The T.N. Dickinson Company, 221 USPQ 713 (TTAB 1984) (petitioner allowed to go forward on claim of misrepresentation of source).


(16) That defendant has misused the federal registration symbol with intent to deceive the purchasing public or others in the trade into believing that the mark is registered.

See Copelands’ Enterprises Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295 (Fed. Cir. 1991); Brown Shoe Co. v. Robbins, 90 USPQ2d 1752 (TTAB 2009) (mistaken belief that registration of mark in foreign country permits use of symbol); Barbara's Bakery Inc. v.

Landesman, 82 USPQ2d 1283, 1290 (TTAB 2007) (allegation that opposer has misused federal registration symbol construed “as a species of the equitable affirmative defense of unclean hands”); Johnson Controls, Inc. v. Concorde Battery Corp., 228 USPQ 39, 44 (TTAB 1985); and Bass Pro Trademarks LLC v. Sportsman's Warehouse Inc., 89 USPQ2d 1844 n.3 (TTAB

2008). Cf. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 27 (CCPA 1976) (raised as affirmative defense).


(17) That defendant committed fraud in the procurement of its registration or during the prosecution of its application for registration.

See Fed. R. Civ. P. 9(b); In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009); DaimlerChrysler Corp. v. American Motors Corp., 94 USPQ2d 1086 (TTAB 2010) (summary judgment on fraud claim denied); Enbridge, Inc. v. Excelerate Energy Limited Partnership, 92 USPQ2d 1537 (TTAB 2009). See also Exergen Corp. v. Wal-Mart Stores Inc., 575 F.3d 1312, 91 USPQ2d 1656, 1670 (Fed. Cir. 2009), citing Kowal v. MCI Communications Corp., 16 F.3d 1271, 1279 n.3 (D.C. Cir. 1994) (“[P]leadings on information and belief require an allegation that the necessary information lies within the defendant's control, and … such allegations must also be accompanied by a statement of the facts upon which the allegations are

based”); Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986); King Auto., Inc. v. Speedy Muffler King, Inc., 667 F.2d 1008, 212 USPQ 801, 803 (CCPA 1981) (fraud must be pleaded with particularity); Smith Int'l, Inc. v. Olin Corp., 209 USPQ 1033, 1044 (TTAB 1981) (fraud requires a willful intent to deceive); G&W Laboratories Inc. V. GW Pharma Ltd., 89 USPQ2d 1571, 1574 (TTAB 2009) (a finding of fraud as to one class in a multiple-class registration does not require cancellation of all classes in a registration); Grand Canyon West Ranch LLC v. Hualapai Tribe, 88 USPQ2d 1501, 1509 (TTAB 2008) (false claim

of use of mark); and Standard Knitting Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917 (TTAB 2006) (same). Cf. Asian and Western Classics B.V. v. Selkow, 92 USPQ2d 1478 (TTAB 2009) (improperly pleaded fraud claim cannot be basis for summary judgment); Zanella Ltd. v. Nordstrom Inc., 90 USPQ2d 1758, 1762 (TTAB 2008) (timely proactive corrective action taken with respect to pleaded registrations raises rebuttable presumption that opposer did not intend to commit fraud); University Games Corp. v. 20Q.net Inc., 87 USPQ2d 1465 (TTAB 2008) (rebuttable presumption that opposer lacked willful intent to deceive Office arises when registrant amended identification of goods during ex parte prosecution); and Tri-

Star Marketing LLC v. Nino Franco Spumanti S.R.L., 84 USPQ2d 1912, 1916 (TTAB 2007) (fraud not found where statement identifying goods in application, although inartfully worded, was not false).

Please Note: The Federal Circuit’s decision in In re Bose, 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009), clarified that fraud in a Board proceeding may not be based merely on a finding that a party “knew or should have known” that it was not using its mark on all of the goods or services recited in an application. Accordingly, consideration of the holdings in cases involving fraud in a goods/services use statement pre-Bose should be reviewed under the standard for fraud as set forth in Bose and cases following Bose, and not as set forth in the line of Board cases following the “knew or should have known” standard set forth in Medinol Ltd. v. Neuro Vasx, Inc., 67 USPQ2d 1205 (TTAB 2003).


(18) That defendant’s registered mark interferes with the registration of a foreign owner’s mark under Article 8 of the General Inter-American Convention for Trademark and Commercial

Protection of Washington, 1929 (“Pan American Convention”), 46 Stat. 2907.

See British-American Tobacco Co. v. Phillip Morris Inc., 55 USPQ2d 1585 (TTAB 2000). Cf. Diaz v. Servicios De Franquicia Pardo's S.A.C., 83 USPQ2d 1320, 1322 (TTAB 2007) (Board has subject matter jurisdiction to entertain affirmative defense of priority pursuant to Article 7 of the Pan American Convention).


(19) That defendant’s application is barred from registration by claim or issue preclusion.


See Mayer/Berkshire Corp. v. Berkshire Fashions Inc., 424 F.3d 1229, 76 USPQ2d 1310 (Fed. Cir. 2005) (opposition not barred by claim or issue preclusion); Jet Inc. v. Sewage Aeration Systems, 223 F.3d 1360, 55 USPQ2d 1854 (Fed. Cir. 2000) (claim preclusion doctrine did not bar petition to cancel); and Nextel Communications Inc. v. Motorola Inc., 91 USPQ2d 1393, 1398 (TTAB 2009) (finding in prior Board proceeding that mark failed to function with respect to “two-way radios” entitled opposer to judgment with respect to those goods under principles of issue preclusion). Cf. Nasalok Coating Corp. v. Nylok Corp., 522 F.3d 1320, 86

USPQ2d 1369 (Fed. Cir. 2008) (cancellation petition barred by doctrine of “defendant preclusion”).See also TBMP § 311.02(b).



PLAN FOR A SUCCESSFUL, STRONG TRADEMARK THAT WILL NOT BE SUCCESSFULLY OPPOSED OR CANCELLED

To verify a potential trademark is strong, is available to use, and is ready to register, the process should be more than a direct hit federal search. To maximize the commercial strength and minimize the weaknesses of a trademark, we start with these five steps:

1) Verify Inherent Strength (this avoids merely descriptive, geographically descriptive, likelihood of confusion and other office actions),

2) Verify Right to Use, (this avoids likelihood of confusion refusal office actions and others)

3) Verify Right to Register, (this avoids many types of refusals including merely descriptive, deceptively misdescriptive, geographically descriptive and others that can often be predicted)

4) Verify the potential mark (as currently used) Functions As A Mark, and (this avoids specimen refusals, trade name refusals, and others. The USPTO is looking for valid use not just any use of a mark.)

5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing. (This avoids office actions to correct incorrect IDs  which can slow down a registration. Incorrect IDs  may be corrected during the prosecution of a trademark if they do not materially alter the mark or the ID. Correcting problems before application saves time and money. Filing in a new class after an application has been submitted to cure a problem ID is the same price as a new application in that class.)

*We don’t stop here but this is a good start!


A Strong Trademark is Not Just a tool to increase sales to customers–it is also easier to sell to your investors & licensees.



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For more information from Not Just Patents, see our other sites:      

Steps to a Patent    How to Patent An Invention

Filing Requirements for Patent Applications

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill  Abandoned Trademarks

Should I Get A Trademark or Patent?

Patentability Evaluation

Trademark Disclaimers   Trademark Dilution     Oppose or Cancel?

Examples of Disclaimers  Business Name Cease and Desist

Sample Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File   How to Trademark Search

37 CFR § 1.53 Application number, filing date, and completion of application

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Difference between Provisional and Nonprovisional Patent Application

Opposition Pleadings    UDRP Elements    Loss of Trademark Rights

How To Answer A Trademark Cease and Desist Letter

Shop Rights  What is a Small or Micro Entity?

Trademark Refusals    Does not Function as a Mark Refusals

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Acceptable Specimen       Supplemental Register  $199 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Patent Pending see also Patent Marking

Trademark Attorney for Overcoming Office Actions

Functional Trademarks   How to Trademark     Surname Refusal

Patent Drawings

Grounds for Opposition & Cancellation     Cease and Desist Letter


Valid/Invalid Use of Trademarks     Trademark Searching

How to Respond to Office Actions

What is a Compact Patent Prosecution?


Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion  DuPont Factors

Patent search-New invention

Color as Trade Dress  3D Marks as Trade Dress

Patent Search-Non-Obvious

Ornamental Refusal  Standard TTAB Protective Order

How to Keep A Trade Secret

Descriptive Trademarks Trademark2e.com  Likelihood of Confusion 2d

State & Federal Trade Secret Laws

Merely Descriptive Trademarks   Merely Descriptive Refusals

Chart of Patent vs. Trade Secret

Register a Trademark-Step by Step   Trademark Fixer

ID of Goods and Services see also Headings (list) of International Trademark Classes

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Geographically Descriptive or Deceptive

Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

What Does ‘Use in Commerce’ Mean?    SCAM Letters

Section 2(d) Refusals   ApplyToTrademark.com

Trademark Incontestability  TTAB Manual (TBMP)

Typical Brand Name Refusals  What is a Family of Marks?

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

TSDR Trademark Status and Document Retrieval

What are Dead or Abandoned Trademarks? Can I Use An Abandoned Trademark?  Can I Abandon a Trademark During An Opposition?

Published for Opposition see also Opposition Steps/Cancellation Steps

Counterclaims and Affirmative Defenses

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process

Zombie Trademark  Not Just Patents Often Represents the Underdog  

What Does Published for Opposition Mean?

What is the Difference between Principal & Supplemental Register? What If Someone Files An Opposition Against My Trademark?

Acquired Distinctiveness  2(f) or 2(f) in part

How to Respond Office Actions  DIY Overcoming Descriptive Refusals

Extension of Time to Oppose

Trademark Clearance Search   DIY Trademark Strategies


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