Florida Patent Lawyer Blog

It's an issue that comes up often. A manufacturer makes a widget and sells it to a U.S. importer, who registers the mark associated with the widget. The manufacturer later claims it owns the mark and seeks to cancel the importer's trademark registration. As a Florida Trademark Lawyer, this is a situation I've seen more than once and I'm constantly looking for the courts' and the Trademark Trial and Appeal Board's (TTAB's) take on this issue. The TTAB's recent decision on this issue in the ZYTNIA vodka case affirms the widely held stance that it's usually the registrant that wins.

As originally reported in the Property Intangible blog, strike one against the manufacturer was that it brought the cancellation action almost 11 years after the mark was registered, well after incontestablity is established. Incontestability means, of course, that there are limited bases for cancelling a registration, and incorrect ownership isn't one of them. The manufacturer therefore had to rely on fraud as its basis for cancellation, i.e., the manufacturer. The court stated:

"claims that respondent fraudulently obtained the registration by asserting that it was the owner of the mark when, in point of fact, petitioner owned the mark. Because petitioner has alleged and attempted to establish a willful withholding of ownership information by respondent when it prosecuted the underlying application that matured into the involved registration, the ownership question may be addressed, but only in the context of fraud."

(italics in original.) Fraud has to be "proven to the hilt," showing that a statement was false, the falsity was intentional, and that the false statement was material to obtaining or maintaining a registration.

There's more than one lesson to be learned here. First, ownership of the mark is not a premise for cancelling an incontestable mark. Second, fraud on the USPTO is really hard to prove, since the Bose case.

As a Florida Patent Lawyer, I keep up with recent happenings at the U.S. Patent and Trademark Office (USPTO) to stay abreast on the latest in trademark law. Recently, the difficulties encountered at the USPTO by NYC-based Foursquare, which offers a location-based social networking website, has come to light.

First off, the trademark application for the company's main mark - FOURSQUARE - has been rejected because an improper specimen was submitted (see trademark application number 77956808). Apparently the attorney for Foursquare submitted an advertisement for the web site and not an actual web page where the applied-for services are rendered. This is a rookie mistake. Serious practitioners don't screw up the specimen requirement. The real question is why didn't Foursquare, which is valuated at $50 million and has 3 million unique users, employ a heavy weight trademark attorney to handle its main mark?

Second, the company's trademark application for CHECK IN (see trademark application no. 7956822) has been refused multiple times on the grounds that it's informational and/or descriptive. In the technology world, there is no hotter term than "check in" right now, especially in light of the fact that Facebook is entering into the location space with Places.While it seems likely that they weren't the first to use it, Foursquare made it ubiquitous among the location-based services. Still, it's a rather descriptive term and it was another rookie mistake to submit a 1(a) use-based application. They should have gone the 2(f) acquired distinctiveness route - they'd probably have a trademark registration by now. Instead, they took the 1(a) route and now there's a Letter of Protest on the record, which will only hurt their case moving forward. Who is this attorney, anyway?

Third, the company's trademark application for FOURSQUARE CHECK IN (see trademark application no. 77956817 ) has been refused for the same reasons as above - it's informational and/or descriptive.

The moral of the story here is that trademark prosecution can be complicated and subtle. Companies with highly-valued trademark assets should hire a specialist that knows his way around trademark law to handle their company jewels, such as an attorney that is Board Certified in Intellectual Property Law.

The Trademark Trial and Appeal Board (TTAB) has issued another decision highlighting the "heavy burden" in proving fraud on the USPTO during prosecution of a trademark application (Ex Parte Metal Gear). As a Florida Trademark Attorney, I constantly monitor TTAB decisions for golden nuggets that help me prosecute my client's rights at the USPTO. The holding in this case illustrates how a "fraud on the USPTO" claim can and cannot be won.

The Court in In re Bose Corp., 476 F.3d 1331, 91 USPQ2d 1938, 1939 (Fed. Cir. 2009), set out the relevant standard for proving fraud. The TTAB stated in the Metal Gear decision: "To prove its claim of fraud, opposer would need to prove "to the hilt" with "clear and convincing evidence" that applicant knowingly" made a "false, material misrepresentation of fact" regarding the ownership of the relevant mark." In the Bose decision, the Court emphasized that proving falsity was insufficient. Citing earlier precedent, the Court noted, "absent the requisite intent to mislead the PTO, even a material misrepresentation would not qualify as fraud under the Lanham Act warranting cancellation." Id. at 1940, citing King Auto., Inc. v. Speedy Muffler King, Inc., 667 F.2d 1008, 1011 n.4, 212 USPQ 801 (CCPA 1981).

The TTAB went on to state: "Even if applicant's witness is incorrect in his belief that applicant owns the mark, however, opposer has not carried its heavy burden of proving the "subjective intent to deceive," which, the Court in Bose noted, "however difficult it may be to prove, is an indispensable element in the analysis." Id. at 1941, citing Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1366, 88 USPQ2d 1001 (Fed. Cir. 2008). Accordingly, since we find that opposer has not proven "to the hilt" with "clear and convincing evidence," the "subjective intent" of applicant "to deceive" the USPTO by falsely claiming ownership in the METAL GEAR mark, the claim of fraud fails."

The lesson here is that prosecuting a "fraud on the USPTO" claim is super difficult. If you can't get the registrant to admit under oath that he intended to deceive the USPTO, and you don't have a smoking gun document, the fraud claim will lose.

What constitutes abandoning a trademark, thereby opening the door for someone else to use it? How long can you cease use of a trademark without losing trademark rights? These are common questions I field regularly as a Miami Trademark Attorney. And the answer depends on a few factors.

The landmark case often cited in trademark abandonment disputes is Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390 (Fed. Cir. 1990), which involved the abandonment of a cigarette brand. We all know that two years of non-use of a mark is prima facie abandonment. The Imperial Tobacco Federal Circuit case stands for the holding that the trademark owner may rebut the presumption of abandonment arising from its non-use by presenting evidence showing that its non-use during that period was excusable, or evidence showing that, during the period of non-use, it maintained an intent to resume use of the mark. So what constitutes intent to resume and what constitutes an excuse?

The court in Imperial Tobacco set a high bar for proving intent to resume use. Even though the party claiming trademark rights took steps each year from 1981-1987 - the period of non-use - towards introduction of the cigarette brand bearing the mark, the court held this was not enough to prove intent to resume use. Specifically, the following activity was found to be inadequate: 1) developing a marketing strategy for the products bearing the mark, 2) seeking registration of the mark for the goods in question, and 3) making efforts to license the mark.

Similarly, in another case the registrant was found not to have the intent to resume use even though he took the following steps during the non-use period: 1) making trips abroad in an effort to establish stores under the mark 2) meeting with real estate agents and 3) visiting possible sites for the stores and examining stores of competitors. Richard v. Linville, 133 F.3d 1446 (Fed. Cir. 1998).

The only acceptable excuse outlined explicitly in the Imperial Tobacco case was the pending resolution of trademark litigation, see, e.g., La Societe Anonyme des Parfums Le Galion v. Jean Patou, Inc., 495 F.2d 1265, 1274, 181 USPQ 545, 550 (2nd Cir.1974); New England Duplicating Co. v. Mendes, 190 F.2d 415, 418, 90 USPQ 151, 153 (1st Cir.1951). But the court in Imperial Tobacco did not agree that pending litigation was the cause of the non-use in that case.

In conclusion, the bar is pretty high when attempting to rebut a presumption of abandonment of a trademark due to non-use. A successful rebuttal requires a substantial factual showing of a concrete and uninterrupted series of actions to get the mark in use in commerce during the entire period of non-use.

Can anyone commence a trademark cancellation proceeding before the U.S. Patent and Trademark Office? Must you have a tie or other relation to the mark being canceled? As a Trademark Lawyer practicing in Miami, Florida, I've been asked this question more than once by a client who desires to cancel a U.S. trademark registration.

On the issue of standing to institute a cancellation proceeding, 15 U.S.C. § 1064 [Section 14 of the Trademark Act] states that a petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, including as a result of dilution under section 43(c), by the registration of a mark on the principal register ... Further, 37 CFR § 2.111(b) states that 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.

The term "damage," as used in Sections 13 and 14 of the Act, 15 U.S.C. §§ 1063 and 1064, concerns specifically a party's standing to file an opposition or a petition to cancel, respectively. A party may establish its standing to oppose or to petition to cancel by showing that it has a "real interest" in the case, that is, a personal interest in the outcome of the proceeding and a reasonable basis for its belief in damage. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999) and TBMP § 309.03(b). There is no requirement that actual damage be pleaded and proved in order to establish standing or to prevail in an opposition or cancellation proceeding.See Cunningham v. Laser Golf Corp., 222 F.3d 943, 945, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000).

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. See Lipton Industries, supra; Metromedia Steakhouses, Inc. v. Pondco II Inc., 28 USPQ2d 1205, 1209 (TTAB 1993). Also, a real interest in the proceeding and a reasonable belief of damage may be found if Plaintiff pleads that 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. See Cerveceria Modelo S.A. de C.V. v. R.B. Marco & Sons, Inc., 55 USPQ2d 1298, 1300 (TTAB 2000)

Interestingly, however, if Plaintiff has a bona fide intent to use the same mark for related goods, and is about to file an intent-to-use application to register the mark, and believes registration of the mark will be refused in view of respondent's registration, this satisfies the "damaged" requirement. See American Vitamin Products Inc. v. Dow Brands Inc., 22 USPQ2d 1313, 1314 (TTAB 1992).

Therefore, a party seeking to cancel a U.S. trademark registration at the U.S. Patent and Trademark Office has a variety of options available when attempting to satisfy the standing and therefore the "damaged" requirement for commencing a trademark cancellation proceeding.

Last week, the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office agreed with Nautica Apparel's that the GET NAUTI trademark should not be registered. As a Miami Trademark Lawyer, this case is interesting because it illustrates the criteria an opposer must meet when seeking to oppose the registration of a trademark that may negatively affect him.

This case involved the well-known and registered NAUTICA trademarks which have been historically used in connection with a variety of products, such as clothing and toiletries, dating back many years. Recently, a party applied to register the mark GET NAUTI in connection with clothing and toiletries. NAUTICA opposed this trademark application on the basis that it was confusingly similar to NAUTICA's mark. As an aside, Nautica Apparel also filed a trademark infringement suit against the users of the GET NAUTI mark in federal district court, which litigation occurred parallel to this opposition.

The TTAB agreed with Nautica Apparel's arguments. The decision of the TTAB involved the use of a test to determine whether the opposition to the trademark application at issue should be sustained. The test involved an evaluation of six main factors, the preponderance of which weighed in favor of the opposer, thereby leading to the opposition being sustained. Briefly, the test included the evaluation of: 1) fame of the opposer's marks, 2) similarity of the goods sold by the applicant and the opposer, 3) the channels of trade in which the goods of applicant and opposer are sold, 4) the variety of opposer's goods, 5) the conditions (such as sales price) applicable to sales of the goods of applicant and opposer and 6) the number and nature of similar marks in use on similar goods.

As a Miami Trademark Lawyer, I am sometimes faced with a situation where a party seeks to oppose my client's trademark application. This case shows that the criteria the opposer must meet in order to successfully oppose a trademark application is rather stiff. The six-part test above provides at least six areas in which the trademark applicant can argue against the opposition. The opposer, therefore, has his work cut out for him when staging an opposition.

As a practicing Florida trademark attorney, I'm often asked about what is registrable as a trademark. Can you register a slogan? Can you register a work of art? Can you register the name of a work of art? Google's current trademark dispute illustrates the answers to some of these questions.

After much fanfare, yesterday Google made its Nexus One phone available for purchase. As promised, the phone operates Google's Android operating system. But science fiction buffs might notice the literary allusion to Phillip K. Dick's novel "Do Android's Dream of Electric Sheep?" made famous by the movie adaptation, Blade Runner, featuring Harrison Ford. The novel features androids, i.e., robotic humans, gone awry. Specifically, the novel focuses on the "Nexus-6" line of androids. The owners of Mr. Dick's estate noticed this similarity and are now threatening to sue Google for trademark infringement. But does Mr. Disk's estate own a trademark?

Phillip K. Dick's "Do Android's ... ?" novel was a single creative work not part of a series, as was the Blade Runner movie. Single creative works and, by extension, characters in those works, are generally not afforded trademark rights (see TMEP sec. 1202.08). Further, to my knowledge, the characters in the Dick movie and novel were never merchandised (such as in "action figure" form) by Dick, Dick's estate or any other licensed party. Without "use in commerce" of the "Android" term in connection with the sale of goods, trademark rights could not have been created.

Mr. Dick's estate will surely point to Verizon's licensing of the "Droid" mark from LucasFilms. The Droid mark, used in the Star Wars films to denote a robot, is now used under license by Verizon as a mark associated with its new smart phone. The Nexus One situation, however, is quite different because LucasFilm has manufactured and sold merchandise featuring the word "Droid" as far back as the 1980s. Thus, LucasFilm created trademark rights dating back decades. Further, LucasFilm's Star Wars franchise spawned a series of movies and books, not a single creative work. The title and the characters used in a series of works can be registered as a trademark (see TMEP sec. 1202.08c)

Therefore, it seems that Mr. Dick's estate is out of luck. Returning to my client's inquiries about items that are registrable as trademarks: slogans and works of art are registrable, but the title of a single creative work is not registrable unless it subsequently becomes the title of a series of works.