The Trademark Trial and Appeal Board (TTAB) and the Federal Courts share the power to cancel federal trademark registrations issued by the USPTO. Under the Trademark Act, a person or company that believes it will be damaged by a trademark registration, may petition for the cancellation of a trademark registration. It is important to note that what is at issue in a cancellation proceeding is the federal trademark registration issued by the USPTO, not the cancellation of the trademark itself or the common law rights that the trademark registrant may have in the trademark.
Thepetitionerisinthepositionofaplaintiffandtheregistrantisinthe positionofadefendant. The petitioner in a cancellation proceeding must plead and prove: (1) that it has standing to petition to cancel because it is likely to be damaged by the trademark registration; and (2) that there are valid grounds why the trademark registration should not continue to be registered with the USPTO. IftheTTAB grantsthepetition in favor of the plaintiff,thenthe defendant’s federal trademark registrationiscancelled.But,asmentionedabove,thisdoesnotdirectly affectanycommonlawrightsthetrademark registrant may have in the trademark. Thus, thefederal trademark registration issued by the USPTO is cancelled, but the cancellation proceeding does not invalidate thetrademarkitself.
Petition for Cancellation of a Trademark Registration
Apetitionforcancellationof a trademark registration canbe filedatanytimeaftera federal trademark registrationhasbeengrantedbytheUSPTO. But if the registration is more than five years old, the grounds for cancellation are limited. If the federal trademark registration is more than five years old, the Trademark Act provides that the registration can be cancelled only on the grounds listed in the statute. The most common grounds for cancellation of a trademark registration that has been registered for more than five years is: the registered trademark is generic of the goods and/or services described in the registration (note the entire mark must be generic); the registered trademark is geographically deceptive of the good and/or services; the registered trademark is functional and does not serve to identify the source of the goods and/or services; the trademark has been abandoned and is no longer being used in the marketplace (or in interstate commerce); and that the trademark registration was obtained through fraud on the USPTO.
Duringthefirstfiveyearsoftheregistration on the Principal Register,thepetitiontocancelcan bebasedonanyprovisionintheTrademark Actwhichwouldhavebarred registration.Apetitiontocancela trademark registration on the Principal Register that is less thanfiveyearsold may bechallenged ontwogrounds: (1)the trademarkis barredfrom federalregistrationunderoneofthestatutorybarsof the Trademark Act;and(2)thatthe trademarkcomeswithinoneofthe statutorilylistedgroundsuponwhicharegistrationmaybecancelledat anytime. The most common ground for cancellation of a trademark registration that has been registered less than five years is based on Section 2(d) likelihood of confusion. In short, the petitioner will generally assert that it has prior use of a trademark that is confusingly similar to registrant’s trademark. The second most common ground for cancellation of a trademark registration that has been registered less than five years is due to non-use or abandonment.
Cancellation of Trademark Registrations on the Supplemental Register of the USPTO
As a reminder, the USPTO maintains two registers for applicants seeking trademark registration. The Principal Register is the primary register of the USPTO. The Principal Register is reserved for those trademarks that fall into the arbitrary, fanciful, inventive, and suggestive categories. The Principal Register also includes those descriptive trademarks that have acquired distinctiveness (or secondary meaning) in the marketplace. When a trademark has been registered on the Principal Register, the trademark is entitled to all the rights provided by the Trademark Act.
Certain trademarks that are not eligible for registration on the Principal Register (generally due to the mark being descriptive of the goods and/or services), but are capable of distinguishing an applicant’s goods and/or services after the trademark has acquired distinctiveness (or secondary meaning), may be registered on the Supplemental Register.
Trademarks for the Supplemental Register are not subject to opposition proceedings (as compared to trademarks that seek registration on the Principal Register), but are subject to cancellation in the following situations. Whenever a person or company believes it will be damaged by the registration of a trademark on the Supplemental Registration (1) for which the effective filing date is after the date on which such person’s (or company’s) trademark became famous and which would likely to cause dilution by blurring or dilution by tarnishment; or (2) on grounds other than dilution by blurring or dilution by tarnishment, such person (or company) may at any time, upon payment of the prescribed fee and the filing of a petition stating the ground therefor, apply to the Director* to cancel such registration.
*The United States Patent and Trademark Office (USPTO) is led by the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (Director).
Trademark Cancellation Due to Likelihood of Confusion
As noted above, the most common ground for cancellation of a trademark registration on the Principal Register that has been registered for less that five years is based on Section 2(d) likelihood of confusion. If the challenged registration is more than five years old, a cancellation based on likelihood of confusion will be dismissed by the TTAB for failure to state a claim. The statutory test used to determine whether there is a likelihood of confusion between two competing trademarks is basically the same for trademark infringement. 15 USCA §1052(d) states in part:
“No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it— consists of or comprises a trademark which so resembles a mark registered in the [United States] Patent and Trademark 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 of the applicant, to cause confusion, or to cause mistake, or to deceive…”
In the 1973 DuPont decision, the U.S. Court of Customs and Patent Appeals (CCPA) discussed the factors relevant to a determination of likelihood of confusion. Although the weight given to the relevant DuPont factors may vary, the following thirteen factors are key considerations in any likelihood of confusion determination:
The similarity or dissimilarity of the trademarks in their entireties as to appearance, sound, connotation and commercial impression;
The similarity or dissimilarity and nature of the goods or services as described in a trademark application or trademark registration in connection with which a prior mark is in use;
The similarity or dissimilarity of established, likely-to-continue trade channels. Restriction of channels to avoid a 2(d) conflict. Where the identification of goods is restricted to certain narrow channels of trade, it can avoid a finding of a likelihood of confusion with a registration for a similar mark for related goods;
The conditions under which and buyers to whom sales are made, i.e., impulse vs. careful, sophisticated purchasing;
The fame of the prior mark (sales, advertising, length of use);
The number and nature of similar marks in use on similar goods;
The nature and extent of any actual confusion;
The length of time during and conditions under which there has been concurrent use without evidence of actual confusion;
The variety of goods on which a mark is or is not used (house mark, family mark, product mark);
The market interface between applicant and the owner of a prior mark: (a) a mere consent to register or use, (b) agreement provisions designed to preclude confusion, i.e., limitations on continued use of the marks by each party, (c) assignment of mark, application, registration and good will of the related business, or (d) laches and estoppel attributable to the owner of the prior mark and indicative lack of confusion;
The extent to which the applicant has a right to exclude others from use of its mark on its goods;
The extent of potential confusion, i.e., whether de minimis or substantial; and
Any other established fact probative of the effect of use. The CCPA emphasized that almost any evidence bearing on the likelihood of confusion is admissible. The only issue will be the weight to be accorded the evidence.
It is important to note that not all DuPont factors will be relevant to every case. Only those factors of relevance to each case need to be weighed and considered.
Challenge Must Only Consider Goods and/Or Services In The Trademark Registration
It is common for a person or company to offer goods and/or services in the marketplace that differ from those described in its trademark registration. The reason for this difference is often due to financial difficulties (i.e., company budget does not allow for the cost of multiple trademark registrations covering all good and/or services), changes in company leadership and ownership (i.e., implementing new product and/or service plans), expansion or reduction or fluctuation of various goods and/or products offered in the marketplace, etc. As such, trademark cancellation proceedings based on likelihood of confusion will solely focus on the goods and/or services that are specifically described in the trademark registration, not what is offered in the marketplace.
Cancellation of Trademark Due to Non-Use or Abandonment
As noted above, the second most common reason to seek cancellation of a trademark registration is due to non-use or abandonment. Under the Trademark Act, a petitioner may seek to cancel a trademark registration issued by the USPTO on the ground that the registered trademark has never been used in commerce on or in connection with some or all of the goods and/or services recited in the challenged trademark registration. It should be noted, however, that a person or company may not seek to cancel the trademark registration until three (3) years after the registration date, but may claim non-use at any time thereafter, including against a registration over five years old (subject to certain exceptions).
For purposes of trademark abandonment (as compared to non-use), a trademark registration is subject to cancellation if it has not been used for at least three consecutive years. In order for this cancellation proceeding to be successful, the registrant must have deliberately ceased to use the trademark in commerce for three (3) years or more, with no intention of using the trademark again in the future.
As noted above, there are certain exceptions to non-use (or excusable non-use) of a trademark. The USPTO has provided the following general guidelines as to what is considered to be a special circumstance that may or may not excuse nonuse:
Business Decision. Non-use related to a business decision is not beyond the holder’s control and does not excuse nonuse;
Decreased Demand. Decreased demand for the product sold under the mark, resulting in its discontinuance for an indefinite period, does not excuse non-use;
Sale of Business. Temporary non-use due to the sale of a business might be considered excusable;
Retooling. The mark might be out of use temporarily because of an interruption of production for retooling of a plant or equipment, with production possible again at a scheduled time. However, non-use due to retooling is excusable only if the holder shows that the plant or equipment being retooled was essential to the production of the goods and that alternative equipment was unavailable on the market;
Orders on Hand. If the product is of a type that cannot be produced quickly or in large numbers (e.g., airplanes), yet there are orders on hand and activity toward filling them, non-use might be considered excusable;
Illness, Fire, and Other Catastrophes. Illness (such as Covid-19), fire, and other catastrophes may create situations of temporary non-use, with the holder being able to outline arrangements and plans for resumption of use. Such non-use is often excusable;
Negotiations With Distributors. A recitation of efforts to negotiate agreements that would allow for resumption of use of the mark, or a statement that samples of the goods have been shipped to potential distributors, may establish lack of intention to abandon the mark, but does not establish the existence of special circumstances that excuse the non-use; and
Trade Embargo. Non-use may be considered excusable where the holder of the registration is willing and able to continue use of the mark in commerce, but is unable to do so due to a trade embargo.
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