Grounds for Cancellation of a Trademark


Trademarks that issued may be cancelled by anyone who has standing and grounds. Any ground that negates the defendant's right to registration may be raised for cancellation. (There are some limitations for cancelling trademarks that are incontestable.)


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.)

 


Examples of Grounds for 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, or to cause mistake, or to deceive.

See, e.g., 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).

(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 Section 2(e)(1) of the Trademark Act, 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).

or that defendant's mark is primarily geographically descriptive

See Section 2(e)(2) of the Trademark Act, 15 U.S.C. § 1052(e)(2). See also, e.g., University Book Store v. University of Wisconsin Board of Regents, 33 USPQ 1385 (TTAB 1994).

or primarily geographically deceptively misdescriptive of them;

See Section 2(e)(3) of the Trademark Act, 15 U.S.C. § 1052(e)(3). See also In re California Innovations, Inc., 329 F.3d 1334, 66 USPQ2d 1853 (Fed. Cir. 2003); In re Save Venice New York, Inc., 259 F.3d 1346, 59 USPQ2d 1778 (Fed. Cir. 2001); 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 Section 2(e)(4) of the Trademark Act, 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); Kellogg Co. v. Pack'Em Enterprises Inc., 14 USPQ2d 1545 (TTAB 1990), aff’d, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991); Allied Mills, Inc. v. Kal Kan Foods, Inc., 203 USPQ 390, 391-92 (TTAB 1979); and Food Specialty Co. v. Carnation Co., 170 USPQ 522, 523 (TTAB 1971).

(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. 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., 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., 284 F. Supp. 2d 96, 68 USPQ2d 1225 (D.D.C. 2003) (Native Americans).

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

See, e.g., In re Boulevard Entertainment, Inc., 334 F.3d 1336, 67 USPQ2d 1475 (Fed. Cir. 2003) and In re Mavety Media Group, Ltd., 33 F.3d 1367, 31 USPQ2d 1923 (Fed. Cir. 1994).

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

See, e.g., Internet Inc. v. Corporation for National Research Initiatives, 38 USPQ2d 1435 (TTAB 1996) and Buffett v. Chi Chi's, Inc., 226 USPQ 428 (TTAB 1985).

(4) That defendant's product design is de jure functional, and if not de jure functional, that the product design has not acquired distinctiveness.

See Section 2(e)(5) of the Trademark Act, 15 U.S.C. § 1052(e)(5), and, e.g., M-5 Steel Mfg, Inc. v. O'Hagin's Inc., 61 USPQ2d 1086 (TTAB 2001). See also, e.g., Valu Engineering Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422 (Fed. Cir. 2002).

(5) 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).142

See, e.g., International Mobile Machines Corp. v. International Telephone and Telegraph Corp.,800 F.2d 1118, 231 USPQ 142 (Fed. Cir. 1986); 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); 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).

(6) 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., Lane Ltd. V. Jackson International Trading Co., 33 USPQ2d 1351, 1352 (TTAB 1994) and Commodore Electonics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1504 (TTAB 1993).

(7) 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., General Foods Corp. v. Ito Yokado Co., Ltd., 219 USPQ 822, 825 (TTAB 1983).

(8) 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., 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) (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), recon. den., 36 USPQ2d 1328 (TTAB 1994).

(9) 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., 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).

(10) 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., Anheuser-Busch Inc. v. The Florists Association of Greater Cleveland, Inc., supra (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).

(11) 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 International Flavors & Fragrances Inc., 47 USPQ2d 1314 (TTAB 1998) aff'd 183 F.3d 1361, 51 USPQ2d 1513 (Fed. Cir. 1999).

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

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).

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

See, e.g., Woodstock's Enterprises Inc. v. Woodstock's Enterprises Inc., 43 USPQ2d 1440 (TTAB 1997), aff'd (unpub'd), Appeal No. 97-1580 (Fed. Cir. Mar. 5, 1998).

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

See Section 2(c) of the Trademark Act, 15 U.S.C. § 1052(c). See also 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 Section 2(c) ground must have cognizable or proprietary right in the name).

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

See 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 15 U.S.C. § 1064(3) includes trade dress such as product design or configuration).

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

See Sections 13(a) and 14 of the Trademark Act, as amended, 15 U.S.C. §§ 1063(a) and 1064, as amended, and Toro Co. v. ToroHead Inc., 61 USPQ2d 1164 (TTAB 2001). See also Moseley v. Secret Catalogue Inc., 537 US 418, 65 USPQ2d 1801 (2003) and, for example, 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).


DO YOU HAVE PRIOR RIGHTS IN A MARK THAT SOMEONE ELSE HAS REGISTERED?

Call us at 1-651-500-7590. We can take the steps to cancel that mark on your behalf.

See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied and been refused.



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