Perhaps one of the most challenging and frustrating experiences for a trademark applicant is receiving a trademark office action from the USPTO alleging a 2(d) Likelihood of Confusion rejection based on an existing trademark application. Here, the trademark examiner is rejecting the applicant’s trademark because it is too sufficiently similar to an existing trademark with sufficiently similar goods/services. While the applicant may be tempted to issue a response to the trademark examiner explaining why the two marks are not in fact very similar, an alternative and indeed more litigious route (when appropriate) is to file a Petition to Cancel the other mark.
UNDERSTANDING A PETITION FOR CANCELLATION
The USPTO is chiefly concerned with maintaining and protecting the trademark rights of worthy owners. However, if the USPTO determines that an existing owner of a trademark does not have the right to the trademark, it will strip the applicant of the mark. If a junior applicant believes that a senior, existing applicant is negatively affecting and/or preventing its own mark from registering, the junior applicant can file a Petition for Cancellation before the United States Trademark Trial and Appeal Board (TTAB). Please note, this is different than a Trademark Opposition proceeding which occurs before the trademark has officially registered.
HOW TO FILE A PETITION TO CANCEL
The mechanics for filing a Petition to Cancel may be found in the Trademark Trial and Appeal Board Manual of Procedure (TTAB). Specifically, under 15 U.S.C. § 1064 [Trademark Act § 14], “A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, including as a result of a likelihood of dilution by blurring or dilution by tarnishment under section 1125(c) of this title, by the registration of a mark on the principal register established by this Act…”
Simply, to file a Petition to Cancel with the TTAB, one must state the his/her interest in the case, the cause to action of the case (why the mark deserves to be canceled) and pay the required fee.
CANCELLING A TRADEMARK APPLICAITON ON THE BASIS OF FRAUD
Fraud claims are unfortunately, or fortunately depending on one’s perspective, challenging to enforce. This is especially the case since the Court of Appeals for the Federal Circuit heard the critically important case of In re Bose, 580 F.3d 1240, 91 USPQ 2d 1938 (Fed. Cir. 2009).
Fraud, of course, is a legal term of art with a specific meaning in the context of the law; legal standards must be met before an inappropriate action to rise to the level of “Fraud.” Prior to In re Bose, an applicant simply had to have been found to have made a magterial misrepresentation to the USPTO concerning the trademark application that the applicant should have known to have been false or misleading. However, post In re Bose, the court narrowed the definition of “Fraud” to be far more constraining and found that there must be a specific intent on the part of the applicant to deceive the USPTO.
For an individual attempting to cancel another’s application on the basis of Fraud, this ruling made this task far more challenging. Naturally, it is immensely difficult for a petitioner to prove that a false statement contained within the trademark application was made with the intent to deceive the USPTO – a material misrepresentation alone does not prove intent to deceive when challenging a trademark application. However, if a petitioner alleges multiple claims of fraud against a trademark holder, only one of those claims needs to be substantiated to have the trademark application or registration voided. How does one go about demonstrating Fraud? The Court’s have held that circumstantial, rather than direct, evidence may suffice to prove Fraud.
HOW TO VOID AN INTENT-TO-USE TRADEMARK APPLICATION
Remember, trademark applications may be filed on an “Intent-to-Use” basis Section 1(b) of the15 U.S. Code § 1501, which simply says, “I am not using my trademark in commerce yet but I intend to use it in commerce.”
If a petitioner cannot satisfactorily demonstrate an adversary’s specific intent to deceive the USPTO, a Petitioner may very well want to consider attempting to demonstrate that the competitor-applicant never actually intended to use the goods/services as stated in the original “Intent-to-Use” trademark application.
However, unlike a successful claim of fraud which eliminates all trademark protection for the items listed in the trademark application or registration, a successful challenge to a bona fide intent-to-use only eliminates trademark protection only for the goods or services where no bona fide intent-to-use can be proven. See Saul Zaentz Company dba Tolkien Ent. v. Joseph M. Bumb, Opposition No. 91170589 (May 18, 2010).
CHALLENGING A TRADEMARK ON THE BASIS OF NO-USE
If a trademark application was filed under 1(a) of the Trademark Act, and the applicant fails to use the trademark with any of the goods or services associated with the registered trademark on or before the date of filing, a no-use action could be a viable challenge. If a court agrees that the trademark is not being used with any of the goods or services listed in the trademark application, the application can be declared void ab initio, and the trademark registration may be canceled.
COMMON DEFENSES AGAINST A TRADEMARK CHALLENGE BASED ON A NO-USE ALLEGATION
When an applicant files for trademark protection under 1(a) of the Trademark Act and does not use the trademark in connection with all the goods or services listed on the application, the applicant has the right to amend the application. The applicant has two choices when amending the application to guard against a no-use challenge. One recourse is to ask the USPTO to remove the goods and services from the application where no-use was made. Another strategy to obviate the defect and protect the trademark is to request the application to be converted to a filing under 1(b) of the Trademark Act. This changes the application to an intent-to-use trademark filing, and may permit the trademark applicant to protect the future use of the trademark on those goods and services. There are other requirements for trademark protection to be extended under this section, and a lawyer experienced in Trademark Law can help identify when this strategy can defend a no-use allegation and protect the goods and services identified in the trademark application.
WHEN CAN A TRADEMARK CANCELLATION BE FILED?
Like every else involving the USPTO, timing is key. The time in which a cancellation proceeding must be filed is a function of the nature of the proceeding and the grounds upon which it sands. Ultimately, there are a few key benchmark dates that the Petitioner should keep in mind.
The Petition to Cancel may be filed with TTAB within 5 years of the trademark registration date, at any time upon the abandonment of the trademark, if fraud is alleged in the acquisition of the trademark registration, at any time if/when the mark is alleged to be descriptive or generic vis-à-vis the goods/services in the application.
TTAB Expedited Cancellation Proceedings Program
The Trademark Trial and Appeal Board (TTAB) is taking major steps to cleanse and streamline the registration of new trademarks by effectuating the removal of antiquated trademarks listed in the register that are no longer used in commerce.
To achieve this aim, the Board has implemented a pilot program titled the “Expedited Cancellation Proceedings.” This program will abbreviate proceedings on marks when the only alleged grounds are non-use or abandonment.
The basic premise undergirding this new pilot program is that the TTAB will proactively identify newly-filed cancellation proceeds and screen them for abandonment or nonuse claims. Then, the TTAB will speed up the proceedings by allowing the cancellation proceedings to be reviewed under the Accelerated Case Resolution (ACR) procedures. In order to make this identification, the TTAB will assign an Interlocutory Attorney to review the cancellation proceeding and determine eligibility. However, notably, parties to the proceeding may elect to make use of the Pilot, even in the event that the case not initially selected for participation by the TTAB.
The TTAB is an active participant throughout the proceedings and during the Discovery Conference, both the Interlocutory Attorney AND an Administrative judge will participate.
The conference will evaluate all noteworthy subjects and will also weigh whether or not parties can bring forward certain facts and evidence, posit means to restrict discovery, and potentially come to terms on the use of the “summary judgment ACR” model. This model permits the Board to regard the motion as the final record and therefore serve as the determination of factual matters being argued.
Remember, trademark registrations often contain more than one class of goods/services and it is quite common for Applicants to have used some of the listed goods/services in commerce while completely neglecting others. In the event that ALL of the goods/services listed in the opponent’s application are no longer in use, the Petitioner should pursue a complete cancellation of the registration. If, however, only a portion of the goods or services have been abandoned, the Petitioner should then pursue only a partial cancellation. Those petitioners whose cancellation proceedings are not chosen for the pilot program, and who can find agreement with their opposing counsel on expedited hearings, should communicate with the Interlocutory Attorney to formally request their services.
In order for a Petitioner to succeed in an abandonment-based Cancellation Proceeding, the Petitioner must demonstrate first and foremost that he has “standing”, or legitimate interest in the case, in order have even the preliminary right to challenge the application. Assuming that the Petitioner can indeed demonstrate a legitimate interest in the case, or Standing, he next needs to meet the burden of making a “prima facie” case of abandonment via a preponderance of the evidence. What would such a case look like? Principally, it is the demonstration that the defendant has terminated use of the trademark vis-a-vis the indicated goods or services in the registration with a clear intention of not resuming usage. Alternatively, the Petitioner may decide instead to marshall forth evidence demonstrating that the Registrant has simply not actively used the trademark, vis-à-vis the goods/services, for a period of three consecutive years. Of course at that point, the burden shifts to the defendant who must counter the claims made by the plaintiff. And on and on it goes.
The key take-away here is that the TTAB has clearly and meaningfully expressed its disdain towards trademark holders who are illegitimately holding onto marks that they are no longer using. The TTAB, through the use of the Expedited Cancellation Pilot Program, has now enabled the cancellation process to proceed with greater ease and expediency.