Form and Content of Oppositions and Petitions to Cancel and the ESTTA
The Trademark Trial and Appeal Board (TTAB) uses an electronic filing system called ESTTA (Electronic System for Trademark Trials and Appeals) that is referenced repeatedly in TBMP 309 below. Some things that are good to know about ESTTA:
- All submissions to TTAB Proceedings should be filed using the appropriate ESTTA form or by mail. ESTTA filing is optional except for filing extensions of time to oppose or oppositions to Madrid Protocol applications. No email is accepted.
- The ESTTA server sometimes has issues and may be down but filings must still be made on time so planning ahead and not waiting until the last minute or filing on paper are the only options if there is a problem.
- Files must be 5 MB or less and large files are slow to upload and work better on IE than on Firefox.
- A filing must be completed including the fee if there is one before it is given a time stamp and the controlling time is Eastern Standard Time (EST).
Here’s more from estta.uspto.gov:
- Fees. If there is a fee for the filing, you must pay by credit card (MasterCard, Visa, American Express or Discover), Electronic Funds Transfer, or through an existing USPTO deposit account.
- Guidelines
- Highlighted terms are linked to relevant instructions or help screens, which will open in a new window.
- You must complete all fields labeled with the required field symbol; you should complete all other relevant fields if you know the information.
- Do not use your browser's "back" and "forward" buttons to navigate. Use only the navigation buttons and links on the ESTTA screens.
- After completing all required fields, you will be prompted to validate and sign your submission. The data appearing on this screen will be submitted to the TTAB. If necessary, navigate back to the proper field to correct the information prior to transmitting the form.
- Upon transmission, the form will be assigned an ESTTA tracking number that will be displayed on the next screen.
- Once you submit a request electronically, the office will immediately provide
you with an e-
mail acknowledgment of receipt. Print a copy of this screen for your records. Please contact the Office within 24 hours of transmission (or by the next business day) if you do not receive this acknowledgment. - Once you file a paper electronically, you may not withdraw the submission from the file, unless the request fails to satisfy the minimum filing requirements. No fee paid will be refunded unless paid by mistake or in excess of the amount required.
TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP)
June 2012
Chapter 300 PLEADINGS
(See all of Chapter 300 at NoticeOfOpposition.com)
TMBP 309 Form and Content of Oppositions and Petitions to Cancel
TMBP 309.01 In General
37 CFR § 2.101(b) Any person who believes that he, she or it would be damaged by the
registration of a mark on the Principal Register may file an opposition addressed to the
Trademark Trial and Appeal Board and must serve a copy of the opposition, including any
exhibits, on the attorney of record for the applicant or, if there is no attorney, on the applicant or on the applicant’s domestic representative, if one has been appointed, at the correspondence address of record in the Office. The opposer must include with the opposition proof of service pursuant to § 2.119 at the correspondence address of record in the Office. If any service copy of the opposition is returned to the opposer as undeliverable, the opposer must notify the Board within ten days of receipt of the returned copy. The opposition need not be verified, but must be signed by the opposer or the opposer’s attorney, as specified in § 11.1 of this chapter, or other authorized representative, as specified in § 11.14(b) of this chapter. Electronic signatures pursuant to § 2.193(c)(1)(iii) are required for oppositions filed through ESTTA under paragraphs (b)(1) or (2) of this section.
(1) An opposition to an application based on section 1 or 44 of the Act must be filed either on paper or through ESTTA.
(2) An opposition to an application based on section 66(a) of the Act must be filed through
ESTTA.
37 CFR § 2.111(b) Any person who believes that he, she or it is or will be damaged by a registration may file a petition, addressed to the Trademark Trial and Appeal Board, for cancellation of the registration in whole or in part. Petitioner must serve a copy of the petition, including any exhibits, on the owner of record for the registration, or on the owner’s domestic representative of record, if one has been appointed, at the correspondence address of record in the Office. The petitioner must include with the petition for cancellation proof of service, pursuant to § 2.119, on the owner of record, or on the owner’s domestic representative of record, if one has been appointed, at the correspondence address of record in the Office. If any service copy of the petition for cancellation is returned to the petitioner as undeliverable, the petitioner must notify the Board within ten days of receipt of the returned copy. The petition for cancellation need not be verified, but must be signed by the petitioner or the petitioner’s attorney, as specified in § 11.1 of this chapter, or other authorized representative, as specified in § 11.14(b) of this chapter. Electronic signatures pursuant to § 2.193(c)(1)(iii) are required for petitions submitted electronically via ESTTA….
37 CFR § 2.116(c) The opposition or the petition for cancellation and the answer correspond to the complaint and answer in a court proceeding.
37 CFR § 2.119(e) Every paper filed in an inter partes proceeding, and every request for an extension of time to file an opposition, must be signed by the party filing it, or by the party's attorney or other authorized representative, but an unsigned paper will not be refused consideration if a signed copy is submitted to the Patent and Trademark Office within the time limit set in the notification of this defect by the Office.
37 CFR § 2.126 Form of submissions to the Trademark Trial and Appeal Board. (a) Submissions may be made to the Trademark Trial and Appeal Board on paper where Board practice or the rules in this part permit. A paper submission, including exhibits and depositions, must meet the following requirements:
(1) A paper submission must be printed in at least 11-
(2) A paper submission must be 8 to 8.5 inches (20.3 to 21.6 cm.) wide and 11 to 11.69 inches (27.9 to 29.7 cm.) long, and contain no tabs or other such devices extending beyond the edges of the paper;
(3) If a paper submission contains dividers, the dividers must not have any extruding tabs or other devices, and must be on the same size and weight paper as the submission;
(4) A paper submission must not be stapled or bound;
(5) All pages of a paper submission must be numbered and exhibits shall be identified in the manner prescribed in § 2.123(g)(2);
(6) Exhibits pertaining to a paper submission must be filed on paper and comply with the requirements for a paper submission.
* * * *
37 CFR § 2.126(b) Submissions may be made to the Trademark Trial and Appeal Board
electronically via the Internet where the rules in this part or Board practice permit,
according to the parameters established by the Board and published on the web site
of the Office. Text in an electronic submission must be in at least 11-
* * * *
Submissions may be made to the Board on paper or filed electronically via ESTTA,
as permitted by the rules or Board practice. Submissions made by CD-
NOTES:
1. See 37 CFR § 2.126(a) and 37 CFR § 2.126(b); Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42247 (August 1, 2007).
2. See 37 CFR § 2.101(b)(1) and 37 CFR § 2.101(b)(2).
3. See 37 CFR § 2.111(a) and 37 CFR § 2.111(b).
4. 37 CFR § 2.116(c).
TMBP 309.02 Form of Complaint
The form of a complaint must meet the general requirements for submissions to the
Board as set forth in 37 CFR § 2.126. See TBMP § 106.03. If a complaint is filed
electronically through ESTTA, the text in the electronic submission must be in at
least 11-
While an opposition against a Trademark Act § 66(a), 15 U.S.C. § 1141f(a), application must be filed through ESTTA, a petition for cancellation, or an opposition against a Trademark Act § 1 or Trademark Act § 44, 15 U.S.C. § 1051 or 15 U.S.C. § 1126, application, may be filed either through ESTTA or on paper. [Note 2.] If the complaint is filed on paper, the submission, including any exhibits, may not be stapled or bound or have any extruding tabs or other such devices, and must otherwise comply with the requirements of 37 CFR § 2.126(a).
NOTES:
1. See 37 CFR § 2.126(b).
2. See 37 CFR § 2.101(b); 37 CFR § 2.111(a) and 37 CFR § 2.111(b).
TMBP 309.02(a) Format for Complaint
Using ESTTA, a person can complete and submit a notice of opposition or petition
for cancellation over the Internet, making an official filing online. ESTTA gives
step-
An opposition against a Trademark Act § 66(a), 15 U.S.C. § 1141f(a), application must be filed through ESTTA. ESTTA requires the opposer of a § 66(a) application to provide information essential to the opposition in order to allow the USPTO to meet promptly its notification obligation to the World Intellectual Property Organization ("WIPO"). Such essential information includes: 1) the specific goods and/or services in the application which are being opposed; 2) the ground(s) for the opposition; and 3) the application or registration number(s) for any mark owned by opposer and cited as a basis for the opposition. [Note 2.] Only the information provided on the ESTTA form is sent to WIPO. [Note 3.]
A complaint filed on paper need not follow a particular format, as long as it meets the requirements of 37 CFR § 2.126(a) for paper submissions and includes the necessary information. The complaint should include the following information:
Heading: The complaint should bear at its top the heading “IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD.”
Identification of subject application or registration: The heading should be followed by information identifying the application or registration that is the subject of the complaint with the wording “Serial No.______” for an opposition or “Registration No.______” for a petition to cancel.
Name of proceeding: The application or registration number should be followed by the name of the proceeding (i.e., “ABC Corporation v. XYZ Company”) and the wording “Opposition No. ______” or “Cancellation No. ______.”
Title of Paper: The title should describe the nature of the paper (i.e., “Notice of Opposition”
or “Petition to Cancel”).
Plaintiff information: The complaint should also include plaintiff's name, entity type (i.e., individual, partnership, corporation, association, etc.), and business address; the names of the partners, if the plaintiff is a partnership, or the state or country of incorporation, if the plaintiff is a corporation.
Registrant information in petition to cancel: A petition to cancel should indicate the name and correspondence address of the current owner of record of the registration. [Note 4.] To determine the correspondence address of the owner of the registration, the petitioner may consult the Office’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/ or the Trademark Applications and Registrations Retrieval (TARR) system, accessible through http://tarr.uspto.gov. [Note 5.] The TSDR display of information includes a tab for "status," a tab for "documents" and a link to "View Assignments." The TARR display of information includes an active link to assignment information. The petitioner may consult the assignments database to determine whether the registration has been assigned. If the registration has been assigned, the assignee is considered the owner of record and the complaint should name the assignee as defendant in the proceeding. See TBMP § 309.02(c)(2).
[TARR is no longer available]
Substance of complaint: The complaint must also include a pleading of the substance (i.e., standing and grounds) of the complaint. See TBMP § 309.03.
Signature: The complaint must be signed and include a description of the capacity in which the signing individual signs, e.g., attorney for plaintiff, plaintiff (if plaintiff is an individual), partner of plaintiff (if plaintiff is a partnership), officer of plaintiff identified by title (if plaintiff is a corporation), etc. See TBMP § 309.02(b).
NOTES:
1. See PPG Industries Inc. v. Guardian Industries Corp., 73 USPQ2d 1926, 1928 (TTAB
2005) (“Since ESTTA’s inception, the Board has viewed the ESTTA filing form and any
attachments thereto as comprising a single document or paper being filed with the
Board”). See also CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1961-
2. See Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1561 (TTAB 2011).
3. See CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1960 (TTAB 2011).
4. See 37 CFR § 2.112(a) and 37 CFR § 2.112(b). See also Informix Software Inc. v. Oracle Corp., 40 USPQ2d 1153, 1155 (N.D. Cal. 1996) (the proper defendant in suit for cancellation of a registration is the owner of that registration, not an exclusive licensee).
5. Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42243 (August 1, 2007).
TMBP 309.02(b) Signature of Complaint
The complaint need not be verified, but it must be signed by the plaintiff or by the plaintiff's attorney, as specified in 37 CFR § 10.1(c), or other authorized representative, as specified in 37 CFR § 11.14(b). [Note 1.] See TBMP § 106.02. Electronic signatures pursuant to 37 CFR § 2.193(c) are required for complaints submitted electronically via ESTTA. [Note 2.] The Board views the electronic signature on the ESTTA filing form as pertaining to all attachments thereto. [Note 3.] Thus, a plaintiff’s electronic signature on the ESTTA filing form serves as its signature for the entire complaint being filed, including in the absence of a signature on any attachment to the filing form. [Note 4.]
If an attorney signs the complaint, it need not be accompanied by a written power of attorney, but if a written power of attorney is filed, the plaintiff must sign it. If a plaintiff signing for itself is a partnership, the signature must be made by a partner. If a plaintiff signing for itself is a corporation or similar juristic entity, the signature must be made by an officer of the plaintiff who has authority to sign for the plaintiff and whose title is given. The signature should be accompanied by a description of the capacity in which the signing individual signs (i.e., as plaintiff, if plaintiff is an individual; as counsel for plaintiff; as a partner of plaintiff, if plaintiff is a partnership; as an officer of plaintiff identified by title, if plaintiff is a corporation; etc.). Although a complaint must be signed, an unsigned complaint will not be refused consideration if a signed copy is submitted to the Board within the time limit set in the notification of this defect by the Board. [Note 5.] See TBMP § 106.02.
However, Trademark Act § 14, 15 U.S.C. § 1064, limits, after a specified five-
NOTES:
1. See 37 CFR § 2.101(b) and 37 CFR § 2.111(b). See also Media Online Inc. v. El Clasificado, Inc. 88 USPQ2d 1285, 1286 n.3 (TTAB 2008).
2. See 37 CFR § 2.101(b) and 37 CFR § 2.111(b).
3. PPG Industries Inc. v. Guardian Industries Corp., 73 USPQ2d 1926, 1927 (TTAB 2005) (“Since ESTTA’s inception, the Board has viewed the ESTTA filing form and any attachments thereto as comprising a single document or paper being filed with the Board”). See also Schott AG v. Scott, 88 USPQ2d 1862, 1863 n.3 (TTAB 2008) (“[T]he ESTTA generated filing form … is considered part of the plaintiff's initial pleading”).
4. PPG Industries Inc., 73 USPQ2d 1926, 1928 (TTAB 2005).
5. See 37 CFR § 2.119(e).
6. See Trademark Act § 14, 15 U.S.C. § 1064; 37 CFR § 2.111(b).
7. Cf. e.g., cases involving former requirement for verification, Williamson-
8. Cf. In re Holland American Wafer Co., 737 F.2d 1015, 222 USPQ 273, 275 (Fed. Cir. 1984) (regarding rejection of renewal application); In re L.R. Sport Inc., 25 USPQ2d 1533, 1534 (Comm'r 1992) (regarding rejection of statement of use); and In re Application Papers Filed November 12, 1965, 152 USPQ 194, 195 (Comm'r 1966) (regarding insufficient filing fee for patent application).
TMBP 309.02(c) Service of Complaint
A Board proceeding commences when an opposer or petitioner files its complaint with the Board, together with the required fee and proof of service, and has concurrently served a copy of its complaint (notice of opposition or petition to cancel), including any exhibits, on the owner of record (or, when applicable, on the attorney or domestic representative) designated in the involved application or registration, or in assignment records regarding the application or registration, at the correspondence address of record in the Office. [Note 1.] The requirement that an opposer or petitioner serve the complaint on the defendant directly recognizes that plaintiffs and defendants often are in contact before the plaintiff files its complaint or claims, and also recognizes that continuation of direct communication is vital both for promoting possible settlement of claims and for ensuring cooperation and procedural efficiency in the early stages of a proceeding. [Note 2.]
For information on service of the opposition on applicant, see TBMP § 309.02(c)(1). For information on service of the petition to cancel on respondent, see TBMP § 309.02(c)(2). For information on service of copies of an application for concurrent use registration, see TBMP § 1106.04.
NOTES:
1. See 37 CFR § 2.101(a) and 37 CFR § 2.111(a). See also Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242 (August 1, 2007).
2. See Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242 (August 1, 2007).
TMBP 309.02(c)(1) Service of Opposition on Applicant
37 CFR § 2.101 Filing an opposition.
(a) An opposition proceeding is commenced by filing in the Office a timely notice of opposition with the required fee. The notice must include proof of service on the applicant, or its attorney or domestic representative of record, at the correspondence address of record in the Office, as detailed in §§ 2.101(b) and 2.119.
(b) Any person who believes that he, she or it would be damaged by the registration of a mark on the Principal Register may file an opposition addressed to the Trademark Trial and Appeal Board and must serve a copy of the opposition, including any exhibits, on the attorney of record for the applicant or, if there is no attorney, on the applicant or on the applicant’s domestic representative, if one has been appointed, at the correspondence address of record in the Office. The opposer must include with the opposition proof of service pursuant to § 2.119 at the correspondence address of record in the Office. If any service copy of the opposition is returned to the opposer as undeliverable, the opposer must notify the Board within ten days of receipt of the returned copy. The opposition need not be verified, but must be signed by the opposer or the opposer’s attorney, as specified in § 11.1 of this chapter, or other authorized representative, as specified in § 11.14(b) of this chapter. Electronic signatures pursuant to § 2.193(c)(1)(iii) are required for oppositions filed through ESTTA under paragraphs (b)(1) or (2) of this section.
(d)(4) The filing date of an opposition is the date of receipt in the Office of the notice of opposition, with proof of service on the applicant, or its attorney or domestic representative of record, if one has been appointed, at the correspondence address of record in the Office, and the required fee, unless the notice is filed in accordance with § 2.198.
An opposition proceeding is commenced by filing in the Office a timely notice of opposition with the required fee. The notice must include proof of service of a copy of the opposition “on the attorney of record for the applicant or, if there is no attorney, on the applicant or on the applicant’s domestic representative, if one has been appointed, at the correspondence address of record in the Office.” [Note 1.]
When an opposer files its notice of opposition with the Board, the opposer must concurrently serve a copy of the opposition, including any exhibits, on the attorney of record for the applicant at the attorney’s correspondence address of record in the Office. [Note 2.] If there is no attorney, then service must be made on the applicant at its address of record, unless applicant has appointed a domestic representative in the involved application, in which case service must be made on the domestic representative. The requirement that an opposer serve the notice of opposition on the applicant directly recognizes that plaintiffs and defendants often are in contact before the plaintiff files its complaint or claims, and also recognizes that continuation of direct communication is vital both for promoting possible settlement of claims and for ensuring cooperation and procedural efficiency in the early stages of a proceeding. [Note 3.]
To determine the correspondence address of record for an applicant or registrant, the potential opposer must check either the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/ or the Trademark Applications and Registrations Retrieval (TARR) system at the following web address: http://tarr.uspto.gov. [Note 4.] Both the TSDR and TARR displays of information include an active link to assignment information, and this link should also be checked. [Note 5.] The complaint need only be served at the address shown as applicant’s correspondence address of record, that is, applicant’s attorney’s, or its designated domestic representative’s record address or applicant’s own record address. [Note TARR is no longer available.]
It is in opposer’s interest to have the real party in interest apprised of the existence of the Board proceeding, so that any judgment eventually obtained will be binding on the correct party. If opposer has any doubt as to the identity or address of the real party in interest, opposer may serve additional copies of the notice of opposition on any address opposer may have reason to believe is more current than the address for applicant that is listed in Office records, or on any person who may have an ownership interest in the relevant application.
The manner of service is provided for in 37 CFR § 2.119. The parties may agree to
use electronic transmission (e.g., facsimile or e-
Where an applicant is represented by an attorney in the Office records, if opposer makes sufficient efforts to timely serve and file the notice of opposition but improperly serves applicant directly, the opposition will not be dismissed as a nullity if (1) the notice of opposition is timely filed and includes a certificate of service and (2) the notice of opposition was timely served on applicant. [Note 7.] The Board may, however, require that opposer reserve the applicant at its attorney’s address, if the attorney has not received notice of the proceeding through other means. [Note 8.] On the other hand, the Board will not institute a proceeding where there is no proof of service, even though there may have been actual service [Note 9], or where there is no actual service even though there may have been proof of service. [Note 10.] Proof of service assumes actual service on applicant or its attorney or domestic representative and is meaningless in the absence of actual service in accordance with the statements contained in the proof of service. [Note 11.]
The notice of opposition may be filed using ESTTA, the Board’s Electronic System for Trademark Trials and Appeals. By utilizing ESTTA to file its notice of opposition, a potential opposer is assured that the notice of opposition will contain a certificate of service attesting to service, because a plaintiff cannot complete the ESTTA filing process unless it confirms that it has forwarded a service copy of its complaint to all parties at their addresses of record. [Note 12.] “Such confirmation then appears on the ESTTA generated filing form for the attached complaint, and the filing form is considered part of the plaintiff’s initial pleading.” [Note 13.] Of course, a potential opposer must complete the ESTTA filing process to be accorded a valid filing date, and must make actual service. The mere appearance of the certificate of service on the notice of opposition does not by itself effect service, however; opposer must still make actual service of the complaint on applicant to comply with its service obligation. [Note 14.]
If a service copy is returned to opposer as undeliverable, opposer must notify the Board within ten (10) days of receipt of the returned service copy, or of any notice indicating that the service copy could not be delivered. [Note 15.] Notification to the Board of failure of service may be provided by any means available for filing pleadings and motions or other papers with the Board. See TBMP § 104 (Business to Be Conducted in Writing). Therefore, notice of failure of service may be provided, for example, by written notice mailed to the Board or by appropriate filing through ESTTA. [Note 16.] While opposer is under no obligation to search for current correspondence address information for, or investigate the whereabouts of, any applicant the opposer is unable to serve, if opposer knows of any new address information for the applicant, opposer must report the address to the Board. In any case in which opposer notifies the Board that a service copy sent to an applicant was returned or not delivered, including any case in which the notification includes a new address for the applicant discovered by or reported to opposer, the Board will effect service. [Note 17.]
The filing date of the notice of opposition is the date of receipt in the Office of the notice, with proof of service and the required fee. [Note 18.] However, if the notice of opposition is filed by the “Express Mail Post Office to Addressee” service of the United States Postal Service (USPS) in accordance with 37 CFR § 2.198, then the filing date is the date the notice of opposition was deposited with the USPS [Note 19], unless the “date in” date cannot be determined, in which case the date the notice is received in the Office is considered the filing date of the opposition. [Note 20.] The Certificate of Mailing procedure described in 37 CFR § 2.197 and the “Express Mail” procedure described in 37 CFR § 2.198 are available for the filing of a notice of opposition. [Note 21.] Facsimile transmission of the notice of opposition is not permitted, and if submitted, will not be accorded a date of receipt. [Note 22.]
For information on filing fees, see TBMP § 308.
NOTES:
1. 37 CFR § 2.201(b).
2. 37 CFR § 2.101(b).
3. See Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242 (August 1, 2007).
4. Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42243 (August 1, 2007).
5. See Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42243 (August 1, 2007).
6. See 37 CFR § 2.119(b)(6); Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42248 (August 1, 2007).
7. See Chocoladefabriken Lindt & Sprungli AG v. Karlo Flores, 91 USPQ2d 1698 (TTAB 2009) (timely service of notice of opposition on applicant directly, rather than at applicant’s correspondence address of record, which was his attorney’s address, was sufficient to commence opposition proceeding; motion to dismiss denied).
8. See Chocoladefabriken Lindt & Sprungli AG v. Karlo Flores, 91 USPQ2d 1698, 1700 (TTAB 2009).
9. See Schott AG v. L’Wren Scott, 88 USPQ2d 1862 (TTAB 2008) (opposer filed notices of opposition via first class mail that failed to include certificates of service and opposer did not dispute its failure to actually forward service copies to applicant upon filing; opposer cannot cure its failure to properly serve the original notices of opposition by filing amended notices and actually serving the amended notices; cases dismissed as nullities).
10. See Springfield Inc. v XD, 86 USPQ2d 1063 (TTAB 2008) (notice of opposition filed through ESTTA on the last day of the opposition period included a proof of service, but inasmuch as there was no actual service on applicant, opposer failed to comply with service requirement of 37 CFR §§ 2.101(a) and 2.101(d)(4); notice of opposition should not have received a filing date and proceeding should not have been instituted; case dismissed as nullity); Schott AG v. L’Wren Scott, 88 USPQ2d 1862 (TTAB 2008) (opposer filed notices of opposition via first class mail that failed to include certificates of service and opposer did not dispute its failure to actually forward service copies to applicant upon filing; cases dismissed as nullities). Cf. Chocoladefabriken Lindt & Sprungli AG v. Karlo Flores, 91 USPQ2d 1698 (TTAB 2009) (timely service of notice of opposition on applicant directly, rather than at applicant’s correspondence address of record, which was his attorney’s address, was sufficient to commence opposition proceeding; motion to dismiss denied).
11. See Springfield Inc. v XD, 86 USPQ2d 1063 (TTAB 2008) (notice of opposition filed through ESTTA on the last day of the opposition period included a proof of service, but inasmuch as there was no actual service on applicant, opposer failed to comply with service requirement of 37 CFR §§ 2.101(a) and 2.101(d)(4); notice of opposition should not have received a filing date and proceeding should not have been instituted; case dismissed as nullity).
12. See Schott AG v. Scott, 88 USPQ2d 1862, n.3 (TTAB 2008).
13. The Equine Touch Foundation Inc. v. Equinology, Inc., 91 USPQ2d 1943, 1944, n.5 (TTAB 2009).
14. See Schott AG v. L’Wren Scott, 88 USPQ2d 1862, 1863 (TTAB 2008); Vibe Records, Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280 (TTAB 2008).
15. See 37 CFR § 2.101(b).
16. Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42243 (August 1, 2007).
17. Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42243 (August 1, 2007).
18. See 37 CFR § 2.101(d)(4).
19. See 37 CFR § 2.198 (a)(1).
20. See 37 CFR § 2.198(a)(2).
21. See 37 CFR § 2.197(a) and 37 CFR § 2.198(a).
22. 37 CFR § 2.195(d)(3); Vibe Records Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280 (TTAB 2008) (untimely opposition dismissed as a nullity).
TMBP 309.02(c)(2) Service of Petition on Respondent
37 CFR § 2.111 Filing petition for cancellation.
(a) A cancellation proceeding is commenced by filing in the Office a timely petition for cancellation with the required fee. The petition must include proof of service on the owner of record for the registration, or the owner’s domestic representative of record, at the correspondence address of record in the Office, as detailed in §§ 2.111(b) and 2.119.
(b) Any person who believes that he, she or it is or will be damaged by a registration may file a petition, addressed to the Trademark Trial and Appeal Board, for cancellation of the registration in whole or in part. Petitioner must serve a copy of the petition, including any exhibits, on the owner of record for the registration, or on the owner’s domestic representative of record, if one has been appointed, at the correspondence address of record in the Office. The petitioner must include with the petition for cancellation proof of service, pursuant to § 2.119, on the owner of record, or on the owner’s domestic representative of record, if one has been appointed, at the correspondence address of record in the Office. If any service copy of the petition for cancellation is returned to the petitioner as undeliverable, the petitioner must notify the Board within ten days of receipt of the returned copy.
A cancellation proceeding is commenced by filing in the Office a timely petition to cancel with the required fee. [Note 1.] The petition must include proof of service of a copy of the petition, including any exhibits, on the owner of record for the registration, [Note 2] or, if the owner has designated a domestic representative which is of record, the petition to cancel must be served on the domestic representative, at the correspondence address of record in the Office. [Note 3.]
When petitioner files its petition to cancel with the Board, the petitioner must concurrently serve a copy of the petition, including any exhibits, on the owner of record for the registration at the correspondence address of record in the Office, unless a domestic representative has been designated in the involved registration or in assignment records regarding the registration, in which case, the domestic representative should be served. The requirement that a petitioner serve the petition to cancel on a respondent recognizes that plaintiffs and defendants often are in contact before the plaintiff files its complaint or claims, and also recognizes that continuation of direct communication is vital both for promoting possible settlement of claims and for ensuring cooperation and procedural efficiency in the early stages of a proceeding. [Note 4.]
The Board does not serve a copy of the petition to cancel on the owner of the registration.
Instead, the petitioner is responsible for serving a copy of the petition to cancel
on the owner of record for the registration, or the owner’s domestic representative,
if one has been appointed, at the correspondence address of record in the Office.
[Note 5.] To determine the correspondence address of the owner of record of the registration,
the petitioner may consult either the Office’s Trademark Status and Document Retrieval
(TSDR) system, accessible through http://tsdr.uspto.gov/, or Trademark Applications
and Registrations Retrieval (TARR) system, accessible through http://tarr.uspto.gov.
[Note 6.] Both the TSDR and the TARR displays of information include an active link
to assignment information. [Note 7] The petitioner may consult the assignment database
to determine whether the registration has been assigned. If the registration has
been assigned, the assignee is considered the owner of record and the complaint must
be served on the correspondence address of the assignee. The complaint need only
be served at the address shown as the owner of record’s correspondence address of
record displayed on either the TSDR or TARR websites, including any relevant information
from the assignment link. [Note 8.] Although petitioner is not required to serve
a copy of the petition to cancel on any address other than the address listed in
the TSDR or TARR systems, if the petitioner has any doubt as to the identity or address
of the real party in interest, the petitioner may also serve a copy of the petition
to cancel on any party believed to have an ownership interest in the relevant registration
(e.g., an assignee or survivor of merger that had not recorded the document of transfer
in the Office’s Assignment Branch but was known to the petitioner) at the correspondence
address known to the petitioner. It is generally in a plaintiff’s interest to have
the real party in interest apprised of the existence of the Board proceeding, so
that any judgment eventually obtained will be binding on the correct party. [Note
9.] The petitioner need not, and should not, serve any attorney who may have represented
the respondent before the Office in the prosecution of the application that resulted
in issuance of the registration. [Note 10.] Moreover, if petitioner serves only said
attorney, it has not effected proper service of the petition to cancel. However,
if respondent has appointed an attorney to represent it in post-
The manner of service is provided for in 37 CFR § 2.119. The parties may agree to
use electronic transmission (e.g., facsimile or e-
The petition to cancel may be filed using ESTTA, the Board’s Electronic System for
Trademark Trials and Appeals. By using ESTTA, a petitioner affirmatively represents
to the Board that it has served a copy of the petition to cancel on respondent; thus
any petitioner who files its petition to cancel through ESTTA will be viewed by the
Board as having included proof of service with the pleading [Note 15], because a
statement confirming service appears on the ESTTA-
If a service copy is returned to petitioner as undeliverable, petitioner must notify the Board within ten (10) days of receipt of the returned service copy, or of any notice indicating that the service copy could not be delivered. [Note 17.] Notification to the Board of failure of service may be provided by any means available for filing pleadings and motions or other papers with the Board. See TBMP § 104 (Business to Be Conducted in Writing). Therefore, notice of failure of service may be provided, for example, by written notice mailed to the Board or by appropriate filing through ESTTA. [Note 18.] While petitioner is under no obligation to search for current correspondence address information for, or investigate the whereabouts of, any respondent the petitioner is unable to serve, if petitioner knows of any new address information for the respondent, petitioner must report the address to the Board. In any case in which petitioner notifies the Board that a service copy sent to a respondent was returned or not delivered, including any case in which the notification includes a new address for the respondent discovered by or reported to petitioner, the Board will effect service. [Note 19.]
The filing date of the petition is the date of receipt in the Office of the petition, with proof of service and the required fee. However, if the petition is filed by the “Express Mail Post Office to Addressee” service of the United States Postal Service (USPS) in accordance with 37 CFR § 2.198, then the filing date is the date the petition to cancel was deposited with the USPS. [Note 20], unless the “date in” date cannot be determined, in which case the date the notice is received in the Office is considered the filing date of the opposition. [Note 21.] The Certificate of Mailing procedure described in 37 CFR § 2.197 and the “Express Mail” procedure described in 37 CFR § 2.198 are available for the filing of a petition to cancel. [Note 22.]
NOTES:
1. See 37 CFR § 2.111(a).
2. See 37 CFR § 2.111(a).
3. See 37 CFR § 2.111(b).
4. See Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242 (August 1, 2007).
5. See Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242 (August 1, 2007).
6. Miscellaneous Changes to Trademark Trial and Appeal Board Rules 72 Fed. Reg. 42242, 42243 (August 1, 2007).
7. Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42243 (August 1, 2007).
8. Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42243 (August 1, 2007).
9. Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42243 (August 1, 2007).
10. See Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42243 (August 1, 2007).
11. See The Equine Touch Foundation Inc. v. Equinology, Inc., 91 USPQ2d 1943 (TTAB 2009) (petitioner allowed to remedy its failure to comply with the service requirements of 37 CFR §§ 2.111(a), 2.111(b) and 2.111(c)(4) by proof of subsequent service of the petition to cancel on respondent; since counsel for respondent filed an answer and was clearly representing respondent, petitioner need not send additional copy of petition to respondent.).
12. See Trademark Act § 14, 15 U.S.C. § 1064.
13. The Equine Touch Foundation Inc. v. Equinology, Inc., 91 USPQ2d 1943, 1944 n.3 (TTAB 2009) (although service of petition to cancel on counsel for registrant was improper, since counsel for registrant filed an answer and was representing registrant, petitioner did not have to reserve registrant at its address of record.)
14. See 37 CFR § 2.119(b)(6); Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42248 (August 1, 2007).
15. See Schott AG v. Scott, 88 USPQ2d 1862 n.3 (TTAB 2008) (where opposer filed notice of opposition by mail, its only opportunity to show proof of service at the time of filing was to include a certificate of service with the notice; having failed to include proof of service with its complaint, opposer could not meet the requirement set forth in 37 CFR § 2.101(b), but use of the Board’s ESTTA online filing system prevents the process from being completed unless opposer confirms that it has forwarded a service copy of its complaint to all parties at their addresses of record).
16. The Equine Touch Foundation Inc. v. Equinology, Inc., 91 USPQ2d 1943, 1944 n.5 (TTAB 2009) (“Such confirmation then appears on the ESTTA generated filing form for the attached complaint, and the filing form is considered part of the plaintiff’s initial pleading.”).
17. See 37 CFR § 2.101(b).
18. Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42243 (August 1, 2007).
19. Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242, 42243 (August 1, 2007).
20. See 37 CFR § 2.198(a)(1).
21. See 37 CFR § 2.198(a)(2).
22. See 37 CFR § 2.197(a) and 37 CFR § 2.198(a).
TMBP 309.03 Substance of Complaint
15 U.S.C. § 1068 [Trademark Act § 18] In such proceedings the Director may refuse to register the opposed mark, may cancel the registration, in whole or in part, ....
37 CFR § 2.99(h) The Trademark Trial and Appeal Board will consider and determine concurrent use rights only in the context of a concurrent use registration proceeding.
37 CFR § 2.101(b) Any person who believes that he, she or it would be damaged by the registration of a mark on the Principal Register may filed an opposition addressed to the Trademark Trial and Appeal Board…. The opposition must set forth a short and plain statement showing why the opposer believes he, she or it would be damaged by the registration of the opposed mark and state the grounds for Opposition.
37 CFR § 2.111(b) Any person who believes that he, she or it is or will be damaged by a registration may file a petition, addressed to the Trademark Trial and Appeal Board, for cancellation of the registration in whole or in part. ...
37 CFR § 2.112(a) The petition for cancellation must set forth a short and plain statement showing why the petitioner believes he, she or it is or will be damaged by the registration, state the grounds for cancellation, and indicate, to the best of petitioner's knowledge, the name and address of the current owner of the registration.
37 CFR § 2.133(c) Geographic limitations will be considered and determined by the Trademark Trial and Appeal Board only in the context of a concurrent use registration Proceeding.
TMBP 309.03(a) In General
TMBP 309.03(a)(1) Scope of Opposition and Petition to Cancel
In an opposition, the registration sought by an applicant may be opposed in whole, or in part. Similarly, a petitioner may seek to cancel a registration in whole, or in part. [Note 1.] See TBMP § 309.03(d). However, geographic limitations will be considered and determined by the Board only within the context of a concurrent use registration proceeding. [Note 2.] See TBMP Chapter 1100. The Board is an administrative tribunal that is empowered to determine only the right to register; it may not determine the right to use, or broader questions of infringement or unfair competition. See TBMP § 102.01.
An opposition against a Trademark Act § 66(a), 15 U.S.C. § 1141f(a), application
must be filed through ESTTA. Because ESTTA requires the opposer of a § 66(a) application
to provide information essential to the opposition in order to allow the USPTO to
meet promptly its notification obligation to the World Intellectual Property Organization
("WIPO"), the scope of the goods and services being opposed are limited to those
identified in the ESTTA-
The Board is an administrative tribunal that is empowered to determine only the right to register; it may not determine the right to use, or broader questions of infringement or unfair competition. See TBMP § 102.01.
NOTES:
1. See Trademark Act § 18, 15 U.S.C. § 1068.
2. See 37 CFR § 2.99(h) and 37 CFR § 2.133(c).
3. See Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d
1558, 1561-
4. CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1962-
TMBP 309.03(a)(2) Elements of Complaint – In General
A notice of opposition must include (1) a short and plain statement of the reason(s)
why opposer believes it would be damaged by the registration of the opposed mark
(i.e., opposer's standing to maintain the proceeding -
Similarly, a petition to cancel must include (1) a short and plain statement of the
reason(s) why petitioner believes it is or will be damaged by the registration sought
to be cancelled (i.e., petitioner's standing to maintain the proceeding -
A pleading should include enough detail to give the defendant fair notice of the basis for each claim. [Note 3]. The elements of each claim should be stated simply, concisely, and directly, and taken together “state a claim to relief that is plausible on its face.” [Note 4.] See TBMP § 503.02.
All averments should be made in numbered paragraphs, the contents of each of which should be limited as far as practicable to a statement of a single set of circumstances. [Note 5.] Each claim founded upon a separate transaction or occurrence should be stated in a separate count whenever a separation would facilitate the clear presentation of the matters pleaded. [Note 6.] A paragraph may be referred to by number in all succeeding paragraphs, and statements in the complaint may be adopted by reference in a different part of the complaint. [Note 7.]
A plaintiff may state as many separate claims as it has, regardless of consistency; a plaintiff may also set forth two or more statements of a claim alternatively or hypothetically, either in one count or in separate counts. [Note 8.]
When two or more statements are made in the alternative, the sufficiency of each is determined independently; the fact that one of them may be insufficient does not mean that the other(s) is (are) also insufficient. [Note 9.]
Evidentiary matters (such as, for example, lists of publications or articles in which a term sought to be registered by an applicant is alleged to be used descriptively) should not be pleaded in a complaint. They are matters for proof, not for pleading. [Note 10.]
Factual allegations made in the pleadings are not evidence of the matters alleged except insofar as they might be deemed to be admissions against interest. [Note 11.]
In inter partes proceedings before the Board, as in civil cases before the United States district courts, all pleadings are so construed as to do substantial justice. [Note 12.]
For a discussion of the grounds for opposition and cancellation, see TBMP § 309.03(c) and J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION §§ 20:13 et. seq. and §§ 20:52 et. seq. (4th ed. 2011), for oppositions and cancellations, respectively. For a discussion of the grounds upon which a Principal Register registration over five years old may be cancelled, see TBMP § 307.01 and TBMP § 307.02 and J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION §§ 20:55 et. seq. (4th ed. 2011).
NOTES:
1. See 37 CFR § 2.104(a); Young v. AGB Corp. 152 F.3d 1377, 47 USPQ2d 1752, 1755 (Fed. Cir. 1998) (standing and grounds are distinct inquiries; allegation of “economic damage” while relevant to standing does not constitute a ground); Consolidated Natural Gas Co. v. CNG Fuel Systems, Ltd., 228 USPQ 752, 753 (TTAB 1985); and Intersat Corp. v. International Telecommunications Satellite Organization, 226 USPQ 154, 156 (TTAB 1985) (allegation of priority without direct or hypothetical pleading of likelihood of confusion is insufficient pleading of Trademark Act § 2(d), 15 U.S.C. § 1052(d)). Cf. Fed. R. Civ. P. 8(a).
2. See 37 CFR § 2.112(a); Person's Co. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477, 1479 (Fed. Cir. 1990); International Order of Job's Daughters v. Lindeburg and Co., 727 F.2d 1087, 220 USPQ 1017, 1019 (Fed. Cir. 1984); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 187 (CCPA 1982); Kelly Services Inc. v. Greene's Temporaries Inc., 25 USPQ2d 1460, 1464 (TTAB 1992); and American Vitamin Products Inc. v. Dow Brands Inc., 22 USPQ2d 1313, 1314 (TTAB 1992). Cf. Fed. R. Civ. P. 8(a).
3. See Bell Atlantic Corp. v. Twombly, 550 U.S. 554, 570 (2007). See also Fair Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1538 (TTAB 2007) (elements of each claim should be stated concisely and directly, and include enough detail to give the defendant fair notice); Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464, 1471 (TTAB 1993), recon. denied, 36 USPQ2d 1328, 1330 (TTAB 1994) (although pleading need not allege particular “magic words,” pleading of mere descriptiveness in this case could not be logically interpreted as asserting that applicant is not the owner of the mark); McDonnell Douglas Corp. v. National Data Corp., 228 USPQ 45, 48 (TTAB 1985) (petitioner's Trademark Act § 2(a), 15 U.S.C. § 1052(a) allegations were merely conclusory and unsupported by factual averments).
4. Ashcroft v. Iqbal, 556 U.S. 662, 129 S.Ct. 1937, 1949 (2009), quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 554, 570 (2007); Fed. R. Civ. P. 8(a)(2).
5. See Fed. R. Civ. P. 10(b); Isle of Aloe, Inc. v. Aloe Creme Laboratories, Inc., 180 USPQ 794, 794 (TTAB 1974) (while paragraphs were numbered, none of the paragraphs were limited to a statement of a single set of circumstances).
6. See Fed. R. Civ. P. 10(b); O.C. Seacrets Inc. v. Hotelplan Italia S.p.A., 95 USPQ2d 1327, 1329 (TTAB 2010) (“claims must be separately stated . . . . We will not parse an asserted ground to see if any of the elements that go to pleading that ground would independently state a separate ground;” motion to amend application filed under Madrid Protocol denied).
7. See Fed. R. Civ. P. 10(b) and (c).
8. See Fed. R. Civ. P. 8(d)(3); Humana Inc. v. Humanomics Inc., 3 USPQ2d 1696, 1698
(TTAB 1987) (applicant could have raised priority issue in a counterclaim by pleading
likelihood of confusion hypothetically notwithstanding the inconsistency of that
pleading with its position in the opposition that the marks are not confusingly similar);
Home Juice Co. v. Runglin Cos., 231 USPQ 897, 899 (TTAB 1986) (pleading construed
as hypothetical pleading of likelihood of confusion which is appropriate where petitioner's
standing is based on its inability to secure a registration, notwithstanding that
it is the senior user, because the subject registration has been cited as a reference
by the examining attorney). See also Taffy's of Cleveland, Inc. v. Taffy's, Inc.,
189 USPQ 154, 156-
9. See Fed. R. Civ. P. 8(d)(2).
10. See McCormick & Co. v. Hygrade Food Products Corp., 124 USPQ 16, 17 (TTAB 1959). Cf. Harsco Corp. v. Electrical Sciences Inc., 9 USPQ2d 1570, 1571 (TTAB 1988) (if evidentiary facts are pleaded, and they aid in giving a full understanding of the complaint as a whole, they need not be stricken).
11. See Brown Shoe Co. v. Robbins, 90 USPQ2d 1752 (TTAB 2009) (allegations in defendant’s application are not facts and must be proven at trial); Baseball America Inc. v. Powerplay Sports, Ltd., 71 USPQ2d 1844, 1846 n.6 (TTAB 2004) (factual allegations made in the pleadings are not evidence of the matters alleged, except insofar as they might be deemed to be admissions against interest). Cf. Bausch & Lomb Inc. v. Karl Storz GmbH & Co. KG, 87 USPQ2d 1526, 1530 (TTAB 2008) (opposer’s attempt to make registrations of record by attaching to its notice of opposition printouts from the Office’s electronic database records showing the current status and title of its registrations would have been sufficient under current version of 37 CFR § 2.122(d)(1)).
12. See 37 CFR § 2.116(a); Fed. R. Civ. P. 8(e); The Scotch Whiskey Association v. United States Distilled Products Co., 952 F.2d 1317, 21 USPQ2d 1145, 1147 (Fed. Cir. 1991).
TMBP 309.03(b) Standing
Any person who believes it is or will be damaged by registration of a mark has standing to file a complaint. [Note 1.] See TBMP § 303. At the 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 that it would suffer some kind of damage if the mark is registered. [Note 2.] See also, TBMP § 303.06 regarding pleading of standing by joint plaintiffs. To plead a “real interest,” plaintiff must allege a “direct and personal stake” in the outcome of the proceeding. [Note 3.] The allegations in support of plaintiff's belief of damage must have a reasonable basis “in fact.” [Note 4.]
Allegations in support of standing which may be sufficient for pleading purposes must later be affirmatively proved by the plaintiff at trial (or on summary judgment). [Note 5.] However, there is no requirement that actual damage be pleaded or proved, or that plaintiff show a personal interest in the proceeding different or “beyond that of the general public” [Note 6], in order to establish standing or to prevail in an opposition or cancellation proceeding. See TBMP § 303.03.
A real interest in the proceeding and a reasonable belief of damage may be found, for example, where plaintiff pleads (and later proves):
A claim of likelihood of confusion that is not wholly without merit [Note 7], including claims based upon current ownership of a valid and subsisting registration [Note 8] or prior use of a confusingly similar mark [Note 9];
Plaintiff has been refused registration of its mark because of defendant’s registration, or has been advised that it will be refused registration when defendant’s application matures into a registration, or has a reasonable belief that registration of its application will be refused because of defendant’s registration [Note 10];
Plaintiff has a bona fide intent to use the same mark for related goods, and is about
to file an intent-
Plaintiff belongs to class of potential purchasers it alleges are disparaged or brought into contempt or disrepute by defendant’s mark [Note 12];
Defendant has relied on its ownership of its application or registration in another proceeding between the parties, or defendant has asserted a likelihood of confusion in another proceeding between the parties involving the same marks. [Note 13].
A counterclaimant's standing to cancel a pleaded registration is inherent in its position as defendant in the original proceeding. [Note 14.] See also TBMP § 313.03.
A plaintiff need not assert proprietary rights in a term in order to have standing. [Note 15.] For example, when descriptiveness or genericness of the mark is in issue, plaintiff may plead (and later prove) its standing by alleging that it is engaged in the sale of the same or related products or services (or that the product or service in question is within the normal expansion of plaintiff's business) and that the plaintiff has an interest in using the term descriptively in its business. (That is, plaintiff may plead that it is a competitor.) [Note 16.]
If a plaintiff can show standing on one ground, it has the right to assert any other grounds in an opposition or cancellation proceeding. [Note 17.]
NOTES: 1. See Trademark Act § 13 and Trademark Act § 14, 15 U.S.C. § 1063 and 15 U.S.C. § 1064.
2. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
See also Herbko International Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d
1375, 1377 (Fed. Cir. 2002); Jewelers Vigilance Committee Inc. v. Ullenberg Corp.,
823 F.2d 490, 2 USPQ2d 2021, 2024 (Fed. Cir. 1987) on remand, 5 USPQ2d 1622 (TTAB
1987), rev’d, 853 F.2d 888, 7 USPQ2d 1628 (Fed. Cir. 1988) (trade association has
standing to maintain opposition); International Order of Job’s Daughters v. Lindeburg
and Co., 727 F.2d 1087, 220 USPQ 1017, 1020 (Fed. Cir. 1984); Enbridge, Inc. v. Excelerate
Energy Limited Partnership, 92 USPQ2d 1537, n.10 (TTAB 2009) (plaintiff does not
have to prove claims or actual damage to establish standing); Syngenta Crop Protection
Inc. v. Bio-
3. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1026 (Fed. Cir. 1999). See also Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982); Corporacion Habanos S.A. v. Anncas Inc., 88 USPQ2d 1785 (TTAB 2008) (Cuban entity has standing although it does not and cannot engage in any business in the United States due to the embargo on Cuban goods).
4. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1027 (Fed. Cir. 1999) (stating
that the belief of damage alleged by plaintiff must be more than a subjective belief)
(citing Universal Oil Products v. Rexall Drug & Chemical Co., 463 F.2d 1122, 174
USPQ 458, 459-
5. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1029 (Fed. Cir. 1999) citing Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). See also, e.g., Sinclair Oil Corp. v. Kendrick, 85 USPQ2d 1032, 1037 (TTAB 2007) (opposer established valid ground for grant of summary judgment in its favor; opposer allowed time to prove its standing); Demon International LC v. Lynch, 86 USPQ2d 1058 (TTAB 2008) (failure to prove standing); and Boswell v. Mavety Media Group Ltd., 52 USPQ2d 1600, 1605 (TTAB 1999) (at final decision, inquiry is not whether pleading of standing is sufficient but whether allegations have been proven).
6. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1027 (Fed. Cir. 1999) (“The crux of the matter is not how many others share one's belief that one will be damaged by the registration, but whether that belief is reasonable and reflects a real interest in the issue”). See also, Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1107 (TTAB 2007) (plaintiff has shown that it is not a mere intermeddler).
7. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000); Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 217 USPQ 641, 648
(Fed. Cir. 1983); Lipton Industries Inc. v. Ralston Purina Co.,670 F.2d 1024, 213
USPQ 185, 189 (CCPA 1982); Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317,
209 USPQ 40 (CCPA 1981) (plaintiff may show standing based on common law rights in
mark that is distinctive, inherently or otherwise); Bausch & Lomb Incorporated v.
Karl Storz GmbH & Co KG, 87 USPQ2d 1526, 1530 (TTAB 2008) (standing established by
introduction of parties’ agreement); L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883,
1887 (TTAB 2008) (standing established by properly making pleaded registrations of
record); Herbaceuticals Inc. v. Xel Herbaceuticals Inc., 86 USPQ2d 1572, 1576 (TTAB
2008) (standing based on ownership of prior registration not voided by allegation,
even if true, that mark is generic); Grand Canyon West Ranch LLC v. Hualapai Tribe,
88 USPQ2d 1501, 1502 (TTAB 2008) (standing established by testimony as to prior use);
Schering-
8. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000); Lipton Industries, Inc. v. Ralston Purina Co.,670 F.2d 1024, 213 USPQ 185,
189 (CCPA 1982); King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108, 110 (CCPA 1974) (prior registration but not priority in use); Brown Shoe
Co. v. Robbins, 90 USPQ2d 1752 (TTAB 2009) (pleaded registration made of record);
Bass Pro Trademarks LLC v. Sportsman's Warehouse Inc., 89 USPQ2d 1844, 1849 (TTAB
2008) (pleaded registrations properly made of record); Corporacion Habanos S.A. v.
Anncas Inc., 88 USPQ2d 1785 (TTAB 2008) (pleaded registration made of record); Boston
Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1586 (TTAB 2008) (standing established
by making of record copies of its pleaded registrations showing the current status
of the registrations and their ownership in opposer); H.D. Lee Co. v. Maidenform
Inc., 87 USPQ2d 1715, 1721 (TTAB 2008) (opposer alleged ownership of application
that issued during proceeding and introduced a certified copy of subsequent registration
at trial showing current status and title in opposer’s name); Apple Computer v. TVNET.net
Inc., 90 USPQ2d 1393 (TTAB 2007) (pleaded registrations made of record); Sinclair
Oil Corp. v. Kendrick, 85 USPQ2d 1032, 1037 n.10 (TTAB 2007) (opposer’s allegations
of ownership of pleaded registrations insufficient to prove standing); Black & Decker
Corp. v. Emerson Electric Co., 84 USPQ2d 1482, 1490 (TTAB 2007) (pleaded registrations
made of record; cancelled registration has no probative value); Christian Broadcasting
Network Inc. v. ABS-
9. See First Niagara Insurance Brokers Inc. v. First Niagara Financial Group Inc.,
476 F.3d 867, 81 USPQ2d 1375 (Fed. Cir. 2007) (intrastate use by foreign opposer);
Syngenta Crop Protection Inc. v. Bio-
10. See Nextel Communications Inc. v. Motorola Inc., 91 USPQ2d 1393, 1400 (TTAB 2009);
Hiraga v. Arena, 90 USPQ2d 1102, 1106-
11. See American Vitamin Products Inc. v. Dow Brands Inc., 22 USPQ2d 1313, 1314 (TTAB 1992).
12. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); McDermott v. San Francisco Women's Motorcycle Contingent, 81 USPQ2d 1212 (TTAB 2006), aff’d unpub’d, 240 Fed. Appx. 865 (Fed. Cir. 2007), cert. den’d, 552 U.S. 1109 (2008).
13. See Tonka Corp. v. Tonka Tools, Inc., 229 USPQ 857, 859 (TTAB 1986) (petitioner has standing to cancel registration that has been asserted, even defensively, in a civil action); and M. Aron Corporation v. Remington Products, Inc., 222 USPQ 93, 96 (TTAB 1984).
14. See Finanz St. Honore B.V. v. Johnson & Johnson, 85 USPQ2d 1478, 1479 (TTAB 2007); Carefirst of Maryland, Inc. v. FirstHealth of the Carolinas Inc., 77 USPQ2d 1492 (TTAB 2005); Ohio State University v. Ohio University, 51 USPQ2d 1289, 1293 (TTAB 1999); Ceccato v. Manifattura Lane Gaetano Marzotto & Figli S.p.A., 32 USPQ2d 1192, 1195 n.7 (TTAB 1994); Syntex (U.S.A.) Inc. v. E.R. Squibb & Sons Inc., 14 USPQ2d 1879, 1881 (TTAB 1990); Bankamerica Corp. v. Invest America, 5 USPQ2d 1076, 1078 (TTAB 1987); and General Mills, Inc. v. Natures Way Products, 202 USPQ 840, 841 (TTAB 1979) (counterclaimant’s position as defendant in the opposition gives him a personal stake in the controversy). Cf. Great Seats Ltd. v. Great Seats Inc., 84 USPQ2d 1235, 1236 n.3 (TTAB 2007) (respondent in a cancellation proceeding has standing by virtue of its ownership of involved registration).
15. See International Nutrition Co. v. Horphag Research Ltd., 220 F.3d 1325, 55 USPQ2d 1492, 1496 (Fed. Cir. 2000); Books on Tape Inc. v. Booktape Corp., 836 F.2d 519, 5 USPQ2d 1301 (Fed. Cir. 1987); and Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021, 2024 (Fed. Cir. 1987), on remand, 5 USPQ2d 1622 (TTAB 1987), rev’d, 853 F.2d 888, 7 USPQ2d 1628 (Fed. Cir. 1988) (“This is true irrespective of the grounds upon which the opposer relies in asserting the nonregistrability of applicant's mark”).
16. See Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d
2021, 2024 (Fed. Cir. 1987), on remand, 5 USPQ2d 1622 (TTAB 1987), rev’d, 853 F.2d
888, 7 USPQ2d 1628 (Fed. Cir. 1988); Otto Roth & Co., Inc. v. Universal Corp., 640
F.2d 1317, 209 USPQ 40, 43 (CCPA 1981); Golomb v. Wadsworth, 592 F.2d 1184, 201 USPQ
200, 201 (CCPA 1979); Stuart Spector Designs, Ltd. v. Fender Musical Instruments
Corp., 94 USPQ2d 1549, 1553 (TTAB 2009) (competitors and retailer of the goods in
the applications have demonstrated a real interest in preventing registration of
the proposed marks); Corporacion Habanos S.A. v. Anncas Inc., 88 USPQ2d 1785 (TTAB
2008) (primarily geographically deceptively misdescriptive and deceptive claims);
Saint-
17. See Enbridge, Inc. v. Excelerate Energy LP, 92 USPQ2d 1537, 1543 n.10 (TTAB 2009), citing Liberty Trouser Co., Inc. v. Liberty & Co., Ltd., 222 USPQ 357, 358 (TTAB 1983) (averments of priority, likelihood of confusion and damage resulting therefrom accepted to show petitioner’s standing with respect to pleaded grounds of fraud and abandonment despite unavailability of likelihood of confusion claim under Trademark Act § 2(d), 15 U.S.C. § 1052(d) because registration more than five years old).
TMBP 309.03(c) Grounds
In addition to standing, a plaintiff must also plead (and later prove) a statutory ground or grounds for opposition or cancellation. [Note 1.] See TBMP § 303.06 regarding pleading of grounds by joint plaintiffs. A plaintiff may raise any available statutory ground for opposition or cancellation that negates the defendant's right to registration. [Note 2.] See TBMP § 102.01 and cases cited therein. Grounds for petitions to cancel a Principal Register registration that is more than 5 years old are more limited and are specified in Trademark Act § 14(3) and Trademark Act § 14(5), 15 U.S.C. § 1064(3) and 15 U.S.C. § 1064(5). See TBMP § 307.01.
In pleading the grounds for opposition or cancellation, citation to a section of the statute, although encouraged and often helpful in clarifying the nature of a set of allegations in a pleading, may not be sufficient to plead a claim under that section or place a defendant on proper notice of the extent of the claim. For example, although the Trademark Act provides that dilution under Trademark Act § 43(c), 15 U.S.C. § 1125 may be asserted as a claim in a Board proceeding, mere reference to that section of the Trademark Act is insufficient to plead a dilution claim, as proper pleading of the claim also requires an allegation that the plaintiff's mark was famous prior to the earliest date on which the defendant can rely for purposes of priority. [Note 3.]
A plaintiff cannot rely upon an unpleaded claim unless the plaintiff's pleading is amended (or deemed amended), pursuant to Fed. R. Civ. P. 15(a) or (b), to assert the matter. [Note 4.] See also TBMP § 314. In cases brought under Trademark Act § 2(d), 15 U.S.C. § 1052(d) the plaintiff must specifically plead any registrations on which it is relying and may not rely at trial on unpleaded registrations. [Note 5.] For information regarding express or implied consent to the trial of an unpleaded issue, see TBMP § 507.03(b).
Examples of available grounds for opposition and for cancellation are listed below. Please Note: The grounds identified in examples 2 (as to de jure functional marks), 3, 12 through 14, (17), and (21) are available for cancellation of a Principal Register registration over five years old. This list is exemplary, not exhaustive.
(1) Trademark Act § 2(d), 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. [Note 6.]
(2) Trademark Act § 2(e), 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, [Note 7] or that defendant's mark is primarily geographically descriptive [Note 8] or primarily geographically deceptively misdescriptive of them [Note 9]; or that defendant's mark is primarily merely a surname [Note 10]; 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. [Note 11.]
(3) Trademark Act § 2(a), 15 U.S.C. § 1052(a): For example, that defendant's mark is geographically deceptive, [Note 12] that defendant's mark disparages members of a particular group, [Note 13] that defendant's mark consists of or comprises immoral, deceptive, or scandalous matter, [Note 14] that defendant's mark falsely suggests a connection with plaintiff's name or identity [Note 15], 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. [Note 16.]
(4) That there was no bona fide use of defendant's mark in commerce prior to the
filing of the use-
(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 under Trademark Act § 1(b), 15 U.S.C. § 1052(b). [Note 18.] A plaintiff need not allege and prove that the defendant acted in bad faith and intended to deceive the USPTO. The requirements for pleading and proving a lack of a bona fide intent to use a mark do not equate to the requirements for pleading and proving fraud. [Note 19.]
(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. [Note 20.]
(7) That defendant is not (and was not, at the time of the filing of its application for registration) the rightful owner of the registered mark. [Note 21.]
(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, [Note 22] or that defendant’s mark, consisting of a particular sound applied to its goods, is not inherently distinctive and has not acquired distinctiveness. [Note 23.]
(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. [Note 24.]
(10) That defendant's mark represents multiple marks in a single application (or registration) (“phantom mark”). [Note 25.]
(11) That defendant's mark has been abandoned due to nonuse with intent not to resume use, and nonuse for three consecutive years shall be prima facie evidence of abandonment, [Note 26]; or due to a course of conduct that has caused the mark to lose significance as an indication of source. [Note 27.]
(12) That defendant's mark consists of or comprises the name of a particular living individual without the individual's consent. [Note 28.]
(13) That defendant's product design is generic. [Note 29.]
(14) That defendant's mark would dilute the distinctive quality of plaintiff's famous mark. [Note 30.]
(15) That defendant has used its mark so as to misrepresent the source of its goods or services. [Note 31.]
(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. [Note 32.]
(17) That defendant committed fraud in the procurement of its registration or during the prosecution of its application for registration. [Note 33.]
(18) That defendant’s registered mark interferes with the registration of a foreign
owner’s mark under Article 8 of the General Inter-
(19) That defendant’s application is barred from registration by claim or issue preclusion. [Note 35.] See also TBMP § 311.02(b).
(20) That defendant's mark is the title of a single creative work and not considered a trademark. [Note 36.]
(21) Trademark Act § 2(b), 15 U.S.C. § 1052(b): Registration of a mark which is "the flag or coat of arms or other insignia of the United States, or of any State or municipality" is prohibited. [Note 37.]
(22) That defendant has not established a commercial presence in the country from which its underlying foreign registration issued where such foreign registration forms the basis of the U.S. registration or application for registration. Trademark Act § 44(e); 15 U.S.C. § 1126(e). [Note 38.]
The following is a brief discussion of the elements of a claim of likelihood of confusion, the most frequently encountered issue in Board inter partes proceedings.
Pursuant to Trademark Act § 2(d), 15 U.S.C. § 1052(d), plaintiff must assert, and then prove at trial, that defendant’s mark, as applied to its goods or services, so resembles plaintiff's previously used or registered mark or its previously used trade name as to be likely to cause confusion, mistake, or deception.
A. Priority A plaintiff must plead (and later prove) priority of use. [Note 39.]
In order to properly assert priority, a plaintiff must allege facts showing proprietary
rights in its pleaded mark that are prior to defendant's rights in the challenged
mark. [Note 40.] Such rights may be shown by, for example, ownership of an application
with a filing date (or a registration with an underlying application filing date)
prior to any date of first use on which defendant can rely; [Note 41] prior trademark
or service mark use; [Note 42] or prior use analogous to trademark or service mark
use. [Note 43.] However, priority is not in issue in an opposition where opposer
pleads (and later proves) that it owns a registration for its pleaded mark, [Note
44] provided that there is no counterclaim or separate petition to cancel the pleaded
registration, or any counterclaim or separate petition to cancel the pleaded registration
by the applicant is ultimately dismissed and the registration remains uncancelled.
[Note 45.] A plaintiff may be permitted to assert the proprietary rights or registration(s)
of a third-
B. Likelihood of Confusion The evidentiary factors the Board considers in determining likelihood of confusion are set out in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). These factors include the similarity of the marks, the relatedness of the goods and/or services, the channels of trade and classes of purchasers for the goods and/or services, the number and nature of similar marks in use on similar goods, the nature and extent of any actual confusion,and the fame of the prior mark. [Note 47.] The relevance and weight to be given the various factors may differ from case to case and a single du Pont factor may be dispositive in certain cases. [Note 48.]
Direct or Hypothetical Pleading of Likelihood of Confusion: A plaintiff may plead likelihood of confusion directly or hypothetically. [Note 49.] A hypothetical pleading may consist of assertions that if, as the trademark examining attorney (or the defendant) contends, plaintiff's mark so resembles defendant's mark as to be likely, when applied to the goods and/or services of the plaintiff, to cause confusion, then plaintiff will be damaged by the registration of defendant's mark. [Note 50.] Of course, in order to state a claim upon which relief can be granted, a hypothetical pleading of likelihood of confusion must be coupled with a pleading of one or more grounds for opposition or cancellation, such as, that defendant's mark has been abandoned; that plaintiff has priority of use (here, the hypothetical pleading of likelihood of confusion serves both as a pleading of plaintiff's standing and as part of the pleading of a ground under Trademark Act § 2(d), 15 U.S.C. § 1052(d)); etc. Thus, a plaintiff wishing to plead likelihood of confusion hypothetically in a proceeding based upon Trademark Act § 2(d), 15 U.S.C. § 1052(d) might assert, for example, that if, as the trademark examining attorney (or the defendant) contends, plaintiff's mark so resembles defendant's mark as to be likely, when applied to the goods and/or services of the plaintiff, to cause confusion, then the registration sought by defendant should be refused (or defendant's registration should be cancelled) because plaintiff has priority of use. [Note 51.]
Reverse Confusion: “Reverse confusion” does not have to be specifically pleaded so long as the plaintiff asserts that the respective marks are so similar as applied to the respective goods or services as to be likely to cause confusion. [Note 52.]
NOTES:
1. See Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1755 (Fed. Cir. 1998). See also, Enbridge, Inc. v. Excelerate Energy LP, 92 USPQ2d 1537, 1543 n.10 (TTAB 2009) (if plaintiff can show standing on one ground, has right to assert any other grounds); Nextel Communications Inc. v. Motorola Inc., 91 USPQ2d 1393, 1396 n.1 (TTAB 2009) (grounds for opposition not pursued at trial or otherwise argued by opposer in its brief deemed waived).
2. See Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1754 (Fed. Cir. 1998); Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021, 2023 (Fed. Cir. 1987), on remand, 5 USPQ2d 1622 (TTAB 1987), rev’d, 853 F.2d 888, 7 USPQ2d 1628 (Fed. Cir. 1988); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982); McDermott v. San Francisco Womens Motorcycle Contingent, 81 USPQ2d 1212, 1216 (TTAB 2006) (Board does not have authority to determine whether a party has engaged in criminal or civil wrongdoings), aff’d unpub’d, 240 Fed. Appx. 865 (Fed. Cir. 2007), cert. den’d, 552 U.S. 1109 (2008); Flash & Partners S.p.A. v. I.E. Manufacturing LLC, 95 USPQ2d 1813 (TTAB 2010) (ex parte examination issues do not form a basis for cancellation); Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1586 (TTAB 2008); Bausch & Lomb Inc. v. Karl Storz GmbH & Co. KG, 87 USPQ2d 1526, 1530 (TTAB 2008) (parties’ agreement prohibits applicant’s use of its mark); Carano v. Vina Concha y Toro S.A., 67USPQ2d 1149, 1152 (TTAB 2003) (Board has no jurisdiction to determine copyright infringement claim but may determine some limited copyright issues as necessary to determine questions of trademark registration); Capital Speakers Inc. v. Capital Speakers Club of Washington D.C. Inc., 41 USPQ2d 1030, 1034 n.3 (TTAB 1996) (Board lacks authority to determine claim that Congress may not lawfully regulate registrant’s activities); Estate of Biro v. Bic Corp., 18 USPQ2d 1382, 1386 (TTAB 1991); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1844 (TTAB 1989); and Crocker National Bank v. Canadian Imperial Bank of Commerce, 223 USPQ 909, 910 n.10 (TTAB 1984) (Board cannot decline to consider an issue because it is ex parte in nature).
Cf. Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1755 (Fed. Cir. 1998) (“economic
damage” is not a ground for opposition although it is relevant to issue of opposer's
standing); Bayer Consumer Care AG v. Belmora LLC, 90 USPQ2d 1587 (TTAB 2009) (Paris
Convention does not provide independent cause of action); Franpovi SA v. Wessin,
89 USPQ2d 1637 (TTAB 2009) (potential plaintiff cannot exercise rights established
by Santiago Convention because it cannot fulfill condition of application to the
Inter American Bureau as set forth in Convention); Demon International LC v. Lynch,
86 USPQ2d 1058 (TTAB 2008) (asserted error by examining attorney is not a proper
ground for opposition); Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881,
1884 n.3 (TTAB 2006) (Agreement on Trade-
3. See Trademark Act § 43(c), 15 U.S.C. § 1125(c); 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), aff'd, 637 F.3d
1344, 98 USPQ2d 1253 (Fed. Cir. 2011); Demon International LC v. Lynch, 86 USPQ2d
1058, 1059-
4. See Syngenta Crop Protection Inc. v. Bio-
5. See, e.g., B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ2d 1500, 1503 (TTAB 2007)
(“In its brief, opposer listed a seventh registration, but it was not pleaded and
a copy was not made of record by notice of reliance (NOR) or through testimony, so
it has not been considered”); Standard Knitting Ltd. v. Toyota Jidosha Kabushiki
Kaisha, 77 USPQ2d 1917, 1919-
6. 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-
7. 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).
8. 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).
9. 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) (describing
§ 2(e)(3) analysis); Corporacion Habanos SA v. Guantanamera Cigars Co., 102 USPQ2d
1085, 1090-
10. 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-
11. 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), citing In re Morton-
12. 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) (“The amended Lanham Act gives geographically
deceptively misdescriptive marks the same treatment as geographically deceptive marks
under § 1052(a).”) (citing In re California Innovations Inc., 329 F.3d 1334, 66 USPQ2d
1853, 1856 (Fed. Cir. 2003)); K-
13. 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 theproceedings,
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-
14. See, e.g., In re Luxuria s.r.o., 100 USPQ2d 1146 (TTAB 2011) (design configuration of a bottle in the shape of a hand with the middle finger extended upwards found to be vulgar and thus unregistrable as scandalous or immoral); 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).
15. 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).
16. 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).
17. 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 USPQ2d1768 (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); ShutEmDown Sports Inc.
v. Lacy, 102 USPQ2d 1036 (TTAB 2012) (respondent's mark not in use in commerce at
time of filing of his use-
18. See, e.g., Spirits International B.V. v. S. S. Taris Zeytin Ve Zeytinyagi Tarim
Satis Kooperatifleri Birligi, 99 USPQ2d 1545, 1548-
19. See SmithKline Beecham Corp. v. Omnisource DDS LLS, 97 USPQ2d 1300, 1305 (TTAB 2010).
20. 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-
21. See, e.g., Ballet Tech Foundation, Inc. v. The Joyce Theater Foundation, Inc.,
89 USPQ2d 1262 (TTAB 2008); Anheuser-
22. 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-
23. 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).
24. 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-
25. See, e.g., Cineplex Odeon Corp. v. Fred Wehrenberg Circuit of Theatres, 56 USPQ2d
1538 (TTAB 2000). See also In re Dial-
27. 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'sEnterprises Inc. v. Woodstock's Enterprises Inc., 43 USPQ2d 1440 (TTAB 1997), aff’d, 152 F.3d 942 (Fed. Cir. Mar. 5, 1998).
28. 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-
29. 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).
30. 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); Research in Motion Limited v. Defining Presence
Marketing Group Inc., 102 USPQ2d 1187 (TTAB 2012) (full analysis of factors finding
dilution by blurring); Rolex Watch U.S.A. Inc. v. AFP Imaging Corp., 101 USPQ2d 1188,
1191-
31. 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).
32. 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).
33. 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-
34. See British-
35. 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); Stephen Slesinger Inc., v. Disney
Enterprises Inc., 98 USPQ2d 1890 (TTAB 2011) (ownership of the marks at issue established
in court proceeding; defendant entitled to summary judgment based on issue preclusion);
Zoba International Corp. v. DVD Format/LOGO Licensing Corp., 98 USQP2d 1106 (TTAB
2011) (claim preclusion barred petitions to cancel against two registrations but
not a third registration; "defendant preclusion" does not apply to facts of case
and further discussed in contrast to "plaintiff preclusion"); 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-
36. See Mattel Inc. v. Brainy Baby Co., 101 USPQ2d 1140, 1142-
37. See, e.g., In re City of Houston, 101 USPQ2d 1534 (TTAB 2012); In re District of Columbia, 101 USPQ2d 1588 (TTAB 2012).
38. Kallamni. v. Khan, 101 USPQ2d 1864 (TTAB 2012).
39. Trademark Act § 2(d), 15 U.S.C. § 1052(d). See West Florida Seafood, Inc., v. Jet Restaurants, Inc., 31 F.2d 1122, 31 USPQ2d 1660, 1663 (Fed. Cir. 1994) (in determining whether a party has established prior use, Board should look at the evidence as a whole); Research in Motion Limited v. Defining Presence Marketing Group Inc., 102 USPQ2d 1187, 1195 (TTAB 2012) (failure to prove priority at common law for goods not covered by pleaded registrations of record); Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1960 (TTAB 2008) (failure to prove priority by preponderance of the evidence); Media Online Inc. v. El Clasificado Inc., 88 USPQ2d 1285, 1287 (TTAB 2008) (respondent not precluded from moving for judgment on the pleadings on the issue of priority, despite its failure to assert priority as an affirmative defense, because priority is a required element of petitioner’s Trademark Act § 2(d), 15 U.S.C. § 1052 claim); and Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1108 (TTAB 2007) (priority established by proof of prior use).
40. See Herbko International Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d
1375, 1378 (Fed. Cir. 2002); Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842 (Fed. Cir. 2000); Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823
F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987), on remand, 5 USPQ2d 1622 (TTAB 1987), rev’d,
853 F.2d 888, 7 USPQ2d 1628, 1632 (Fed. Cir. 1988); Otto Roth & Co., Inc. v. Universal
Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981); Golomb v. Wadsworth, 592 F.2d
1184, 201 USPQ 200, 201 (CCPA 1979); Syngenta Crop Protection Inc. v. Bio-
41. See Spirits International B.V. v. S. S. Taris Zeytin Ve Zeytinyagi Tarim Satis
Kooperatifleri Birligi, 99 USPQ2d 1545, 1549 (TTAB 2011) (opposer may rely on its
earlier-
42. See Syngenta Crop Protection Inc. v. Bio-
43. See T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879, 1881 (Fed.
Cir. 1996) (must show that the activities claimed to constitute analogous use have
had “substantial impact” on the purchasing public); West Florida Seafood, Inc., v.
Jet Restaurants, Inc. 31 F.2d 1122, 31 USPQ2d 1660 (Fed. Cir. 1994) (use in advertising);
Martahus v. Video Duplication Services Inc., 3 F.3d 417, 27 USPQ2d 1846, 1850 (Fed.
Cir. 1993) (trade name use); National Cable Television Association Inc. v. American
Cinema Editors Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1428 (Fed. Cir. 1991) (trade
name use); Fair Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1539 (TTAB 2007)
(analogous use may be asserted against an intent-
44. See King Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108, 110 (CCPA 1974); (“Board must consider existing registrations of subsequent-
45. See, e.g., Massey Junior College, Inc. v. Fashion Institute of Technology, 492
F.2d 1399, 181 USPQ 272, n.6 (CCPA 1974) (“prior use need not be shown by an opposer
relying on a registered mark unless the applicant counterclaims for cancellation”);
Contour Chair-
Please Note: In cases where a plaintiff has relied on its ownership of a pleaded registration, any counterclaim or petition to cancel that registration is normally decided before the issues in the underlying opposition. See, e.g., Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1328 (TTAB 1992); and General Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270, 1272 (TTAB 1992).
46. See Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987), on remand, 5 USPQ2d 1622 (TTAB 1987), rev'd, 853 F.2d 888, 7 USPQ2d 1628 (Fed. Cir. 1988) (interest of trade association found sufficient); Association pour la Defense et la Promotion de l'Oeuvre de Marc Chagall dite Comite Marc Chagall v. Bondarchuk, 82 USPQ2d 1838 (TTAB 2007) (petitioner committee’s right derived through inheritance found sufficient); Internet Inc. v. Corporation for National Research Initiatives, 38 USPQ2d 1435 (TTAB 1996) (petitioners failed to allege that they, or anyone else, possessed proprietary rights in the term); Order of Sons of Italy in America v. Profumi Fratelli Nostra AG, 36 USPQ2d 1221 (TTAB 1995) (fraternal organization has standing); and Holmes Products Corp. v. Duracraft Corp., 30 USPQ2d 1549, 1552 (TTAB 1994) (no legitimate interest in preventing confusion alleged).
47. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
See e.g., Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772,
396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (to determine whether the marks
are similar for purposes of assessing the likelihood of confusion, the Board will
consider the appearance, sound, connotation and commercial impression of each mark);
Hewlett-
48. See Odom’s Tennessee Pride Sausage, Inc. v. FF Acquisition, LLC, 600 F.3d 1343, 93 USPQ2d 2030, 2032 (Fed. Cir. 2010) (Board did not err in basing its decision on dissimilarity of marks alone); Shen Manufacturing Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004) (“Neither we nor the board, however, need consider every du Pont factor”); Kellogg Co. v. Pack’em Enterprises Inc., 14 USPQ2d 1545 (TTAB 1990), aff’d, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991); Opryland USA Inc. v. The Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1473 (Fed. Cir. 1992). See also Herbko International Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002); Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581 (TTAB 2008) (dissimilarity of marks dispositive); Mattel Inc. v. Funline Merchandise Co., 81 USPQ2d 1372, 1374 (TTAB 2006) (key considerations are similarities between the marks and goods recited in both parties’ registrations); Truescents LLC v. Ride Skin Care LLC, 81 USPQ2d 1334, 1342 (TTAB 2006) (dissimilarity of marks dispositive); and Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1800 (TTAB 2001).
49. See Fed. R. Civ. P. 8(d)(2).
50. See John T. Clark Company v. Colgate-
51. See Humana Inc. v. Humanomics Inc., 3 USPQ2d 1696, 1698 (TTAB 1987) (applicant
could have raised priority issue in a counterclaim by pleading likelihood of confusion
hypothetically notwithstanding the inconsistency of that pleading with its position
in the opposition that the marks are not confusingly similar); and Home Juice Co.
v. Runglin Cos., 231 USPQ 897, 899 (TTAB 1986) (pleading construed as hypothetical
pleading of likelihood of confusion which is appropriate where petitioner's standing
is based on its inability to secure a registration, notwithstanding that it is the
senior user, because the subject registration has been cited as a reference by the
examining attorney). See also, Taffy's of Cleveland, Inc. v. Taffy's, Inc., 189 USPQ
154, 156-
52. See Top Tobacco LP v. North Atlantic Operating Co., 101 USPQ2d 1163, 1175 n.18 (TTAB 2011); American Hygienic Laboratories Inc. v. Tiffany & Co., 12 USPQ2d 1979, 1983 n.7 (TTAB 1989).
TMBP 309.03(d) Remedy Under Trademark Act § 18, 15 U.S.C. § 1068, (Partial Opposition or Partial Cancellation)
15 U.S.C. § 1068 [Trademark Act § 18] In such proceedings the Director may refuse to register opposed mark, may cancel the registration, in whole or in part, may modify the application or registration by limiting the goods or services specified therein, may otherwise restrict or rectify with respect to the register the registration of a registered mark, may refuse to register any or all of several interfering marks, or may register the mark or marks for the person or persons entitled thereto, as the rights of the parties under this chapter may be established in the proceedings....
37 CFR § 2.111(b) Any person who believes that he, she or it is or will be damaged by a registration may file a petition, addressed to the Trademark Trial and Appeal Board, for cancellation of the registration in whole or in part. ...
37 CFR § 2.133(b) If, in an inter partes proceeding, the Trademark Trial and Appeal Board finds that a party whose application or registration is the subject of the proceeding is not entitled to registration in the absence of a specified restriction to the involved application or registration, the Board will allow the party time in which to file a motion that the application or registration be amended to conform to the findings of the Board, failing which judgment will be entered against the party.
37 CFR § 2.99(h) The Trademark Trial and Appeal Board will consider and determine concurrent use rights only in the context of a concurrent use registration proceeding.
37 CFR § 2.133(c) Geographic limitations will be considered and determined by the Trademark Trial and Appeal Board only in the context of a concurrent use registration proceeding.
Under Trademark Act § 18, 15 U.S.C. § 1068, the Board has the authority to cancel registrations in whole or in part, to restrict the goods or services identified in an application or registration, or to “otherwise restrict or rectify...the registration of a registered mark.” [Note 1.] (However, geographic limitations will be considered and determined by the Board only within the context of a concurrent use proceeding). [Note 2.] For information concerning concurrent use proceedings, see TBMP Chapter 1100.
Relief under Trademark Act § 18, 15 U.S.C. § 1068, may be sought separately and apart from, or in addition to, any other ground. [Note 3.] A claim under Trademark Act § 18, 15 U.S.C. § 1068, is in the nature of an equitable remedy and does not require pleading and proof of specific grounds for cancellation or opposition, such as abandonment. [Note 4.]
Please Note: A claim in which the plaintiff seeks to delete specific items on the grounds that the defendant is no longer using, and has no intent to resume use of its mark on those goods or services, is not a claim under Trademark Act § 18, 15 U.S.C § 1068 but is essentially a “straightforward” pleading of abandonment. [Note 5.]
A claim to restrict or limit the goods or services under Trademark Act § 18, 15 U.S.C. § 1068. A plaintiff may seek to partially cancel a registration, or partially oppose registration only as to specific items in the identification of goods or services, or only to the extent of restricting the goods or services in a particular manner in terms of type, use, customers, trade channels, etc. [Note 6.] In such case, essentially a plaintiff is seeking either to delete specific items or limit the identification in some way. For example, a plaintiff may seek to restrict or modify the goods or services in a particular manner, that is, by the addition of wording that identifies the goods or services with greater particularity in terms of type, use, channels of trade, etc.
However, the Board will not permit an action to restrict or modify the goods or services in this manner where such a claim is divorced from the question of likelihood of confusion. [Note 7.] Thus, a party seeking to restrict an opponent's broadly worded identification of goods or services, in a case involving likelihood of confusion, must plead and prove that (i) the entry of a proposed restriction to the goods or services in its opponent's application or registration will avoid a finding of likelihood of confusion and (ii) the opponent is not using its mark on those goods or services that will be effectively excluded from the application or registration if the proposed restriction is entered. [Note 8.]
In considering a restriction of a registration, the Board will look to the nature of the use made by registrant as of the time the restriction is sought, not as of the time registration was sought. [Note 9.] A petition to partially cancel a registration by restricting the goods or services in a particular manner in terms of type, use, channels of trade, etc., in order to avoid a likelihood of confusion can be made against registrations over 5 years old as well as those less than 5 years old. [Note 10.] This is so because such a claim is in the nature of an equitable remedy and does not constitute an attack on the validity of a registration. [Note 11.]
A claim to restrict or rectify with respect to the register the registration. A petition to restrict or clarify the description of a mark in a registration would fall under the provision giving the Board authority to “restrict or rectify” the register. [Note 12.] As in the case of a petition to restrict goods or services, a proper pleading to restrict the description of a mark could include allegations that, for example, the description of the mark in the registration is ambiguous or overly broad and not specific to the mark actually used by the defendant, and that the limitation would avoid a finding of a likelihood of confusion. [Note 13.]
That same provision, along with the authority to “register the mark...for the person...entitled thereto,” allows the Board to correct, respectively, a registration or application to identify the true owner, if such correction is warranted. [Note 14.]
Similarly, under this provision, a plaintiff may seek relief in the nature of entry of a disclaimer of an assertedly generic term forming only a portion of the mark, provided that the registration is less than five years old. [Note 15.]
As in the case of any other claim, a claim for partial opposition or partial cancellation ordinarily should be asserted prior to trial in order to give the defendant fair notice thereof. [Note 16] See also TBMP § 309.03, TBMP § 314 and TBMP § 507. In addition, the claim must be specific in nature so that the defendant has fair notice of the specific restriction being sought. [Note 17.] Any claim that is not pleaded in the complaint, as originally filed or as amended (or deemed amended) pursuant to Fed. R. Civ. P. 15(a) or 15(b), will not be entertained by the Board. [Note 18.] See also TBMP § 309.03, TBMP § 314 and TBMP § 507.
A defense which seeks to restrict a plaintiff's pleaded registration will not be entertained in the absence of a timely counterclaim, or separate petition, to cancel the registration in whole or in part. [Note 19.] See TBMP § 309.03(c), TBMP § 311.01(c) and TBMP § 313.01.
For information on a request by defendant to restrict its identification of goods or services under Trademark Act § 18, 15 U.S.C. § 1068, see TBMP § 311.02(b); TBMP § 507 and TBMP § 514. For information on asserting a counterclaim to partially cancel a registration, see TBMP § 313.01.
For information concerning the extent of default for failure to file an answer to a claim for partial opposition or cancellation, see TBMP § 312.01.
NOTES:
1. Trademark Act § 18, 15 U.S.C. § 1068. See also, 37 CFR § 2.111(b) and 37 CFR §
2.133(b); Montecash LLC v. Anzar Enterprises, Inc. 95 USPQ2d 1060, 1063 (TTAB 2010);
Wellcome Foundation Ltd. v. Merck & Co., 46 USPQ2d 1478, 1479 (TTAB 1998); and Eurostar
Inc. v. “Euro-
2. See 37 CFR § 2.99(h) and 37 CFR § 2.133(c); Snuffer & Watkins Management Inc. v. Snuffy's Inc., 17 USPQ2d 1815, 1816 (TTAB 1990). Cf. Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1106 n.3 (TTAB 2007) (proposed counterclaim to partially cancel petitioner’s pleaded registrations by further limiting their geographic scope denied).
3. Montecash LLC v. Anzar Enterprises, Inc. 95 USPQ2d 1060, 1063 (TTAB 2010); Dak
Industries, Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434, 1437 (TTAB 1995); and Eurostar,
Inc. v. “Euro-
4. See Eurostar Inc. v. “Euro-
5. DAK Industries Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434, 1437 (TTAB 1995) (because applicant sought to strike from opposer's registration goods specifically listed therein, such as “open reel audio tape,” on the grounds that opposer was no longer using and had no intent to resume use of its mark on such goods, it was proper to plead abandonment and applicant did not need to plead that a finding of likelihood of confusion will be avoided by the restriction it sought). See also Milliken & Co. v. Image Industries Inc., 39 USPQ2d 1192 (TTAB 1996) (respondent's counterclaim alleging that respondent may have prior use of the mark in the trade channels sought to be excluded in petitioner's registration, was legally insufficient pleading of either likelihood of confusion or abandonment because likelihood of confusion is not available ground for cancellation of registration over five years old and because counterclaim lacked pleading of allegation that petitioner had not, as of the filing date of the counterclaim, commenced using its mark in connection with the goods for which counterclaimant sought to have deleted from registration).
6. See DAK Industries Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434, 1437 (TTAB 1995);
and Eurostar Inc. v. “Euro-
7. See DAK Industries Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434, 1437 (TTAB 1995)
(“the Board will not exercise its authority under Section 18 to permit an action
for partial cancellation by restriction or modification of the goods listed in an
application or registration where such a claim is divorced from the question of likelihood
of confusion.”); Eurostar Inc. v. “Euro-
8. See Eurostar Inc. v. “Euro-
9. See Milliken & Co. v. Image Industries Inc., 39 USPQ2d 1192 (TTAB 1996).
10. See Eurostar Inc. v. “Euro-
11. See Eurostar Inc. v. “Euro-
12. See IdeasOne Inc. v. Nationwide Better Health Inc., 89 USPQ2d 1952, 1953 (TTAB 2009); Wellcome Foundation Ltd. v. Merck & Co., 46 USPQ2d 1478, 1479 (TTAB 1998).
13. See Wellcome Foundation Ltd. v. Merck & Co., 46 USPQ2d 1478, 1479-
14. See 8440 LLC v. Midnight Oil Company, 59 USPQ2d 1541 (TTAB 2001) (where the record showed that plaintiff, rather than defendant, was the true owner of the marks in the challenged application and registration and where the parties filed a joint motion that registration be issued in the name of plaintiff and that the register be rectified to show plaintiff as the owner of the existing registration, Board exercised authority under Trademark Act § 18, and granted motion). See also Chapman v. Mill Valley Cotton, 17 USPQ2d 1414 (TTAB 1990).
15. See Montecash LLC v. Anzar Enterprises, Inc., 95 USPQ2d 1060, 1063 (TTAB 2010) (petitioner, seeking entry of a disclaimer of a purportedly generic term that formed a portion of a mark that is not generic in its entirety, and that resided on the Principal Register for more than five years, failed to state a claim upon which relief may be granted); Kellogg Co. v. Pack'em Enterprises, Inc., 14 USPQ2d 1545 (TTAB 1990) (counterclaim plaintiff seeking, in the alternative, that an amendment be entered to disclaim a purportedly descriptive portion of an asserted mark registered for less than five years stated a claim upon which relief may be granted).
16. See Penguin Books Ltd. v. Eberhard., 48 USPQ2d 1280 (TTAB 1998) (restriction
proposed for first time in reply brief untimely); Eurostar Inc. v. “Euro-
17. See Eurostar Inc. v. “Euro-
18. See Eurostar Inc. v. “Euro-
19. 37 CFR § 2.106(b)(2)(ii).
TMBP 309.04 Defects in Complaint That May Affect Institution of Proceeding
No proceeding will be instituted, and any submitted filing fee will be refunded in the following circumstances:
(1) If an opposition filed during an extension of time to oppose is in the name of someone other than the person who obtained the extension, and the opposer is unable to show, pursuant to 37 CFR § 2.102(b), that it is in privity with the person who obtained the extension, or that the person in whose name the extension was requested was misidentified through mistake. See TBMP § 303.05.
(2) If an opposition or a petition for cancellation in paper form is filed prematurely (i.e., prior to publication of the subject mark in the Official Gazette for purposes of opposition, or prior to issuance of a registration of the subject mark, respectively, even if the registration has issued by the time of the Board's action). See TBMP § 306.03 and TBMP § 307.03. Please Note: ESTTA, the Board’s electronic filing system, does not permit a party to file a notice of opposition prior to the opposition period or a petition to cancel prior to registration of the mark.
(3) If an opposition is filed in paper form after the time for opposing has expired; or is filed unsigned, and a signed copy is not submitted within the time limit set in the notification of this defect by the Board; or is filed without the required fee; or if the opposed application was abandoned before the opposition was filed. See TBMP § 218, TBMP § 306.04, TBMP § 308 and TBMP § 309.02(b). Please Note: ESTTA, the U.S. Patent and Trademark Office’s electronic filing system, does not permit a plaintiff to file a notice of opposition after the expiration of the opposition period or without payment of the required fee. [Note 1.]
(4) If a party files an opposition in paper form but misidentifies the application serial number, and it is clear from the notice of opposition that another serial number was intended, should it come to the Board’s attention as the Board is manually instituting the opposition that a notice of allowance has issued with respect to the intended serial number or that the mark has been registered, the proceeding will not be instituted and the filing fee will be refunded.
(5) Where an opposition is filed through ESTTA and the applicant has not supplied
its e-
Proceedings will be instituted and the filing fee charged in the following circumstances:
(1) If a party files a petition for cancellation in paper form against a Principal Register registration that is more than five years old, but does not allege any ground upon which such a registration can be cancelled (see Trademark Act § 14, 15 U.S.C. § 1064), the cancellation will still be instituted. (The insufficiency of pleaded claims must be raised by motion, such as under Fed. R. Civ. P. 12; they may also be addressed during a discovery conference conducted with Board participation.) Any fee submitted with the petition will not be refunded. Please Note: when a plaintiff uses ESTTA to file a notice of opposition or petition to cancel, ESTTA presents a checklist of available grounds and prompts the filer to select grounds for opposition or cancellation. [Note 2.] Failure to select or include any grounds will halt the filing process. For a petition to cancel, if the involved registration is more than five years old, ESTTA will present a listing of available grounds under Trademark Act § 14(3) and Trademark Act § 14(5), 15 U.S.C. §§ 14(3) and (5), and will not allow a party to select other (unavailable) grounds.
(2) If a petition for cancellation is filed in paper form with respect to a registration which, at the time of the filing of the petition, was not a “live” registration (e.g., the time for filing an affidavit of use under Trademark Act § 8, 15 U.S.C. § 1058, had expired, and no acceptable affidavit had been filed; the registration had already been cancelled as the result of a previous cancellation proceeding), the proceeding will be instituted, and then dismissed as moot. Any fee submitted with the petition for cancellation will not be refunded. Please Note: The ESTTA filing system prompts the user to input the registration number of the mark for which cancellation is sought. If the registration is not “live,” ESTTA will halt the process. ESTTA will also refuse to continue an opposition filing process if the potential opposer inputs a serial number for a mark that has not yet been published for opposition or for which the opposition period has expired.
(3) If a party files an opposition or a petition for cancellation in paper form, and immediately thereafter changes its mind, and requests that the opposition or petition for cancellation not be instituted and that the papers be returned, the request ordinarily will be denied, the proceeding will be instituted, and no refund will be made. However, if there is a defect in the opposition or petition for cancellation which precludes institution, no proceeding will be instituted, and any submitted fee will be refunded.
(4) If a party files an opposition or a petition for cancellation but misidentifies the application serial number or registration number, and the proceeding is instituted against the incorrect serial or registration number, the filing fee will not be refunded. [Note 3.] See TBMP § 306.01. When a proceeding is erroneously instituted, the proceeding will be dismissed as a nullity, rather than vacated, so as to maintain the integrity of the proceeding numbers. If the opposition or cancellation was filed on paper, the Board will retain all papers. If the proceeding was instituted through ESTTA, the electronic file record for the erroneous opposition or cancellation will be retained in TTABVUE.
NOTES:
1. See Vibe Records Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280 (TTAB 2008) (where ESTTA filing process not completed because no fee was paid, date appearing on the ESTTA “Validate” screen is inoperative; opposition dismissed as a nullity).
2. See O.C. Seacrets Inc. v. Hotelplan Italia S.p.A., 95 USPQ2d 1327, 1329 n.4 (TTAB 2010) (“When an opposer uses ESTTA to file a notice of opposition, ESTTA prompts the filer to list grounds for opposition”).
3. See 37 CFR § 2.194(b)(1); Yahoo! Inc., v. Loufrani, 70 UPSQ2d 1735, 1736 (TTAB 2004).
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