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  • A cancellation action, brought under Section 14 of the Trademark Act, are limited for a registration that has been in existence for five years; Section 2(d) is not one of these grounds.
    • Otto International, Inc. v. Otto Kern GMBH, Cancellation No. 92046167, (TTAB 2007).
      • It is well settled that the grounds on which a cancellation action may be brought under Section 14 of the Trademark Act are limited for a registration that has been in existence for five years; Section 2(d) is not one of these grounds. See Carefirst of Maryland, Inc. v. FirstHealth of the Carolinas Inc., 77 USPQ2d 1492 (TTAB 2005); TBMP § 307 (2d ed. rev. 2004). Thus, to the extent the petition presents allegations of a claim under Section 2(d), they are barred by Section 14(3), inasmuch as respondent's registration is more than five years old.
  • Section 14(3) only provides for a claim where the allegation is that the mark, as a whole rather than a portion, is generic.
    • CONSOLIDATED: Opposition No. 91161028, FINANZ ST. HONORE, B.V. v. JOHNSON & JOHNSON; Cancellation No. 92044444, JOHNSON & JOHNSON v. FINANZ ST. HONORE, B.V. (TTAB 2007).
      • Although Count II of the counterclaim sets forth a claim based on an allegation that a portion of the mark is generic, Section 14(3) only provides for a claim where the allegation is that the mark, as a whole, is generic.
  • Section 14 of the Trademark Act provides that after five years from the date of the registration of a mark, a petition (or counterclaim) to cancel said registration may be filed only on grounds specified in subsections 14(3) and 14(5).
    • CONSOLIDATED: Opposition No. 91161028, FINANZ ST. HONORE, B.V. v. JOHNSON & JOHNSON; Cancellation No. 92044444, JOHNSON & JOHNSON v. FINANZ ST. HONORE, B.V. (TTAB 2007).
      • Section 14 of the Trademark Act provides that after five years from the date of the registration of a mark, a petition (or counterclaim) to cancel said registration may be filed only on grounds specified in subsections 14(3) and 14(5).
  • Properly plead grounds for cancellation in a counterclaim need only allege facts in the pleading, which if proved true would establish valid ground for canceling a registration.
    • CONSOLIDATED: Opposition No. 91161028, FINANZ ST. HONORE, B.V. v. JOHNSON & JOHNSON; Cancellation No. 92044444, JOHNSON & JOHNSON v. FINANZ ST. HONORE, B.V. (TTAB 2007).
      • In order to properly plead its grounds for cancellation in the counterclaim and avoid dismissal thereof at this stage of the proceeding, Johnson need only allege facts in its pleading which, if proved, would establish there is a valid ground for seeking to cancel the registrations. See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
  • A cause of action to cancel a registered mark must assert the mark has been abandoned and allege the ultimate facts pertaining to the abandonment.
    • Otto International, Inc. v. Otto Kern GMBH, Cancellation No. 92046167, (TTAB 2007).
      • In order to set forth a cause of action to cancel the registration of a mark which assertedly has been abandoned, plaintiff must allege ultimate facts pertaining to the alleged abandonment. See Clubman's Club Corporation v. Martin, 188 USPQ 455, 456 (TTAB 1975).
  • The party petitioning to cancel a federally registered trademark must plead that it has standing and that there is a valid ground for the cancellation of the registration.
    • L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007).
      • Furthermore, the party petitioning to cancel a federally registered trademark must plead that it has standing and that there is a valid ground for the cancellation of the registration. Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1754 (Fed. Cir. 1998) ("Section 14 has been interpreted as requiring a cancellation petitioner to show (1) that it possesses standing to challenge the continued presence on the register of the subject registration and (2) that there is a valid ground why the registrant is not entitled under law to maintain the registration") (internal quotation marks omitted). See also Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000).
  • A presumption of validity attaches to a service mark registration, and the party seeking cancellation must rebut this presumption by a preponderance of the evidence.
    • L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007).
      • Thus, a presumption of validity attaches to a service mark registration, and the party seeking cancellation must rebut this presumption by a preponderance of the evidence." West Florida Seafood Inc. v. Jet Restaurants Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1662 (Fed. Cir. 1994).
    • National Rural Electric Cooperative Association v. Suzlon Wind Energy Corporation, Cancellation No. 92043377, (TTAB 2006).
      • Another point we consider is that "a presumption of validity attaches to a service mark registration, and the party seeking cancellation must rebut this presumption by a preponderance of the evidence." West Florida Seafood Inc. v. Jet Restaurants Inc., 31 F.3d 1122, 31 USPQ 1660, 1662 (Fed. Cir. 1994).
  • A party claiming prior use of a registered mark may petition to cancel the registration on the basis of such prior use.
    • L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007).
      • A party claiming prior use of a registered mark may petition to cancel the registration on the basis of such prior use pursuant to section 14 of the Lanham Act. 15 U.S.C. Section 1064.
  • The party seeking cancellation must rebut the presumption of a registration's validity by a preponderance of the evidence.
    • L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007).
      • We start by noting that the party seeking cancellation must rebut the presumption of a registration's validity by a preponderance of the evidence. West Florida Seafood, 31 USPQ at 1662. See also Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989) ("[I]n a [trademark registration] cancellation for abandonment, as for any other ground, the petitioner bears the burden of proof. Moreover, the petitioner's burden is to establish the case for cancellation by a preponderance of the evidence"); Martahus v. Video Duplication Services Inc., 3 F.3d 417, 27 USPQ2d 1846, 1850 (Fed. Cir. 1993).
  • Burden of Proof: The burden of proof in a cancellation proceeding for a service mark registration is no different from that for a trademark or certification mark.
    • L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007).
      • The burden of proof in a cancellation proceeding for a service mark registration is no different from that for a trademark or certification mark.
  • Burden of Proof: The opposer's burden of proof in both opposition and cancellation proceedings is a preponderance of the evidence.
    • L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007).
      • FOOTNOTE 11 "Eastman Kodak Co. v. Bell & Howell Document Management Products Co., 994 F.2d 1569 26 USPQ2d 1912, 1918 (Fed. Cir. 1993) (The "challenger's burden of proof in both opposition and cancellation proceedings is a preponderance of the evidence")."
  • Uncontrolled ("naked") licensing can result in a registered mark being deemed abandoned for losing its significance as an indication of origin and constitute grounds for canceling the registration.
    • Paris Glove of Canada, Ltd. v. SBC/Sporto Corp., Cancellation No. 92044132, (TTAB 2007).
      • A trademark registration may be cancelled if the mark has become "abandoned." See Trademark Act §45, 15 U.S.C. §1127. A mark can become abandoned by any act or omission of the registrant which causes the mark to lose its significance as an indication of origin. Thus, uncontrolled and "naked" licensing can result in such a loss of significance of a trademark that a registration should be cancelled. See J. Thomas McCarthy, 3 McCarthy on Trademarks and Unfair Competition §18:48 (4th ed. 2007).
  • Petition to cancel registration is to be served on the owner of the registration or its domestic representative, if so appointed, and not counsel for respondent.
    • The Equine Touch Foundation, Inc. v. Equinology, Inc., Cancellation No. 92050044 (TTAB 2009).
      • FOOTNOTE 3: "3 Petitioner filed a copy of this letter with the Board. The Board notes that it was incorrect for petitioner to serve the petition on counsel for respondent, rather than on respondent, i.e., the owner of the registration. A petition is to be served on the owner of the registration or its domestic representative, if one has been appointed, at the correspondence address of record for the owner or domestic representative, if any. See Trademark Rule 2.111(b). Nonetheless, as previously noted, counsel for respondent has filed an answer and it is clear that respondent will be represented by counsel in this proceeding. Under these circumstances, therefore, petitioner need not forward a service copy directly to respondent."
  • Trademark Rule 2.111(a) requires a petition to cancel must include proof of service on the owner of record for the registration, or the owner's domestic representative of record.
    • The Equine Touch Foundation, Inc. v. Equinology, Inc., Cancellation No. 92050044 (TTAB 2009).
      • Amended Trademark Rule 2.111(a), effective November 1, 2007, states that a petition to cancel "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" (emphasis added).
  • Discussion of change in service requirement.
    • The Equine Touch Foundation, Inc. v. Equinology, Inc., Cancellation No. 92050044 (TTAB 2009).
      • FOOTNOTE 4: "The USPTO published a notice of final rulemaking in the Federal Register on August 1, 2007, at 72 Fed. Reg. 42242. By this notice, various rules governing Trademark Trial and Appeal Board inter partes proceedings were amended. Certain amendments had an effective date of August 31, 2007, while most had an effective date of November 1, 2007. Prior to November 1, 2007, a petitioner was not required to serve its petition to cancel upon its adversary. Instead, in cases commenced prior to November 1, 2007, a petitioner was able, under Trademark Rule 2.112(a), to simply file its petition to cancel, and any exhibits thereto, in duplicate form with the Board. Upon receipt, the Board would then forward the duplicate or service copy of the petition to cancel, and any exhibits thereto, directly to the owner of the registration along with an order instituting proceedings, in accordance with Trademark Rule 2.113. Both of these rules have been amended. The final rule and a chart summarizing the affected rules, their changes, and effective dates, are viewable on the USPTO website at these web addresses: http://www.uspto.gov/web/offices/com/sol/notices/72fr42242.pdf http://www.uspto.gov/web/offices/com/sol/notices/72fr42242_FinalRuleChart.pdf"\
  • Case Finding: Petition not entitled to filing date, even where TTAB so assigned one, where it failed to comply with service obligations.
    • The Equine Touch Foundation, Inc. v. Equinology, Inc., Cancellation No. 92050044 (TTAB 2009).
      • Thus, although the Board accorded the petition an October 9, 2008 "filing date" based on petitioner's ESTTA filing, petitioner clearly is not entitled to such a filing date because it failed to comply with its service obligations on that date.
  • Failure to properly serve a notice of opposition results in the the case being dismissed as a nullity.
    • The Equine Touch Foundation, Inc. v. Equinology, Inc., Cancellation No. 92050044 (TTAB 2009).
      • If this case were an opposition proceeding, and October 9, 2008 had been the deadline for filing a notice of opposition, proof of subsequent service of the notice on defendant or its counsel would be insufficient and the case would have to be dismissed as a nullity. See Springfield Inc. v. XD, 86 USPQ2d 1063 (TTAB 2008) and In re Sasson Licensing Corp., 35 USPQ2d 1510, 1512 (Comm'r 1995).
  • So long as a party cures a defective filing by its amendment of the proof of service petition to cancel within the time to cancel a mark, the petition will be accorded a filing date as of the amendment.
    • The Equine Touch Foundation, Inc. v. Equinology, Inc., Cancellation No. 92050044 (TTAB 2009).
      • However, unlike a notice of opposition wherein an opposer cannot remedy a failure to comply with the service requirements if the remedy is provided after the close of the opposition period, as originally set or as extended, a petition to cancel a registration issued on the Principal Register on a claim that the mark is merely descriptive may be filed at any time within five years from the date of the registration of the mark.
    • The Equine Touch Foundation, Inc. v. Equinology, Inc., Cancellation No. 92050044 (TTAB 2009).
      • Inasmuch as petitioner acted promptly to cure its acknowledged failure of service, and given the fact that this petition would not be time-barred as of the date of actual compliance with the service requirement, petitioner cured the defective filing by its amendment of the proof of service. Therefore, the Board will not dismiss this petition as a nullity but instead will accord the petition a new filing date of October 17, 2008, which is the date of such amendment.
  • Evidentiary matters should not be pleaded in or with a complaint or filed at any time other than the petitioner's assigned time for submitting evidence in a cancelation proceeding.
    • The Equine Touch Foundation, Inc. v. Equinology, Inc., Cancellation No. 92050044 (TTAB 2009).
      • Finally, the Board notes that on November 17, 2008, petitioner filed several items "in support of" its petition to cancel. However, evidentiary matters should not be pleaded in or with a complaint or filed at any time other than the petitioner's assigned time for submitting evidence, i.e., its assigned testimony period.
  • Evidence: Plaintiff's pleaded registrations may be filed along with the petition to cancel or notice of opposition.
    • The Equine Touch Foundation, Inc. v. Equinology, Inc., Cancellation No. 92050044 (TTAB 2009).
      • Moreover, with the exception of a plaintiff's pleaded registrations, which may be filed along with the petition to cancel or notice of opposition, documents and other exhibits may be made of record only during the testimony period of the offering party in the following two ways: (1) they may be introduced by a witness during the course of a deposition, and (2) they may be submitted pursuant to a notice of reliance filed with the Board if they meet the requirements of Trademark Rule 2.120 or 2.122. See generally, TBMP Chapter 700 (2nd ed. rev. 2004).7 In view thereof, petitioner's November 17, 2008 submission will not be given any further consideration.
  • Evidence: Documents and other exhibits may be made of record in the following two ways.
    • The Equine Touch Foundation, Inc. v. Equinology, Inc., Cancellation No. 92050044 (TTAB 2009).
      • Moreover, with the exception of a plaintiff's pleaded registrations, which may be filed along with the petition to cancel or notice of opposition, documents and other exhibits may be made of record only during the testimony period of the offering party in the following two ways: (1) they may be introduced by a witness during the course of a deposition, and (2) they may be submitted pursuant to a notice of reliance filed with the Board if they meet the requirements of Trademark Rule 2.120 or 2.122. See generally, TBMP Chapter 700 (2nd ed. rev. 2004).7 In view thereof, petitioner's November 17, 2008 submission will not be given any further consideration.
  • Board cancellation and opposition proceedings are not exactly parallel to federal district court trademark infringement proceedings inasmuch as there are no alleged infringers and frequently no use by the applicants in Board proceedings.
    • The Toro Company v. ToroHead, Inc., Opposition No. 114,061, (TTAB 2001).
      • Board cancellation and opposition proceedings are not exactly parallel to federal district court trademark infringement proceedings inasmuch as there are no alleged infringers and frequently no use by the applicants in Board proceedings.
  • Evidence: Registrations relied upon by opposer are not open to attack of their validity, so long as the remarks remain uncanceled.
    • The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003).
      • The law, of course, is well settled that an applicant cannot collaterally attack opposer's registration in the absence of a counterclaim for cancellation. 37 C.F.R. § 2.106(b); Contour Chair-Lounge Co. v. The Englander Co., 324 F.2d 186, 139 USPQ 285, 287 (CCPA 1963) ("[T]his is an opposition only and in an opposition, this court has always held that the validity of the opposer's registrations are not open to [collateral] attack"); Cosmetically Yours, Inc. v. Clairol, Inc., 424 F.2d 1385, 165 USPQ 515, 517 (CCPA 1970) ("As long as the registration relied upon by an opposer in an opposition proceeding remains uncanceled, it is treated as valid and entitled to the statutory presumptions"). Nonetheless, we do not find applicant to have engaged in an impermissible collateral attack on opposer's registration.
  • Case Finding: Labs' failure to file affidavits of continued use with respect to its Class 35 services and its explicit request to delete such services from its registrations Ė resulting in cancellation of that class Ė fit squarely within the ambit of Trademark Rule 2.134(a). In view thereof, and because Pharma's written consent to Labs' voluntary cancellations is not of record, judgment is hereby entered against Labs.
    • G&W Laboratories, Inc. v. G W Pharma Limited, Opposition No. 91169571 (TTAB 2009)
      • With regard to its services in Class 35, Labs has stated that it deleted those services from each of its registrations when it filed its Section 8 affidavits in connection with the registrations, and provided copies of the relevant Section 8 affidavits. Labs' failure to file affidavits of continued use with respect to its Class 35 services and its explicit request to delete such services from its registrations Ė resulting in cancellation of that class Ė fit squarely within the ambit of Trademark Rule 2.134(a). In view thereof, and because Pharma's written consent to Labs' voluntary cancellations is not of record, judgment is hereby entered against Labs.
  • In a cancellation proceeding against a registration having multiple classes, the respondent's request in a Section 8 affidavit to delete a class that is subject to cancellation is governed by Trademark Rule 2.134(a).
    • G&W Laboratories, Inc. v. G W Pharma Limited, Opposition No. 91169571 (TTAB 2009)
      • In a cancellation proceeding against a registration having multiple classes, the respondent's request in a Section 8 affidavit to delete a class that is subject to cancellation is governed by Trademark Rule 2.134(a).
  • The determination of opposer's compliance with the signature requirement was an ex parte examination issue addressed during prosecution, and as with similar ex parte examination matters, does not form a basis for cancellation.
    • Flash & Partners S.P.A. v. I. E. Manufacturing LLC, Opposition No. 91191988 (TTAB 2010)
      • The determination of opposer's compliance with the signature requirement was an ex parte examination issue addressed during prosecution. This issue, as with similar ex parte examination matters, does not form a basis for cancellation. Cf. Saint-Gobain Abrasives Inc. v. Unova Indus. Automation Syst. Inc., 66 USPQ2d 1355, 1359 (TTAB 2003) (fairness dictates that the ex parte question of the sufficiency of the description of the mark not be a ground for opposition or cancellation); Phonak Holding AG v. ReSound GmbH, 56 USPQ2d 1057, 1059 (TTAB 2000) (failure to enforce requirement of filing of foreign registration is examination error and not a ground for counterclaim for cancellation); Marshall Field & Co. v. Mrs. Fields Cookies, 11 USPQ2d 1355, 1358 (TTAB 1989) (the insufficiency of the specimens, per se, does not constitute grounds for cancellation); Century 21 Real Estate Corp. v. Century Life of Am., 10 USPQ2d 2034, 2035 (TTAB 1989) (the adequacy of specimens is solely a matter of ex parte examination).
  • The request to delete a class of goods or services sought to be cancelled is, in effect, a voluntary cancellation of the registration as to that class under Section 7(e).
    • G&W Laboratories, Inc. v. G W Pharma Limited, Opposition No. 91169571 (TTAB 2009)
      • The request to delete a class of goods or services sought to be cancelled is, in effect, a voluntary cancellation of the registration as to that class under Section 7(e) of the Trademark Act. See TBMP § 602.02(a) (2d ed. rev. 2004).
  • To the extent that applicant seeks to assert a counterclaim based on the allegations that the underlying application was incomplete, and thus void ab initio, opposer's submission of an unsigned application does not form a statutory ground for cancellation.
    • Flash & Partners S.P.A. v. I. E. Manufacturing LLC, Opposition No. 91191988 (TTAB 2010)
      • To the extent that applicant seeks to assert a counterclaim based on the allegations that the underlying application was incomplete, and thus void ab initio, opposer's submission of an unsigned application does not form a statutory ground for cancellation.
  • Trademark Rule 2.111(b) provides that a petition for cancellation need not be verified but must be signed by either the petitioner or petitioner's attorney.
    • Media Online Inc. v. El Clasificado, Inc., Cancellation No. 92047294 (TTAB 2008)
      • Trademark Rule 2.111(b) provides that a petition for cancellation need not be verified but must be signed by either the petitioner or petitioner's attorney.
  • Trademark Rule 2.134(a) provides that after the commencement of a cancellation proceeding, if the respondent applies for cancellation of the involved registration under Section 7(e) of the Act without the written consent of every adverse party to the proceeding, judgment shall be entered against the respondent.
    • G&W Laboratories, Inc. v. G W Pharma Limited, Opposition No. 91169571 (TTAB 2009)
      • Trademark Rule 2.134(a) provides that after the commencement of a cancellation proceeding, if the respondent applies for cancellation of the involved registration under Section 7(e) of the Act without the written consent of every adverse party to the proceeding, judgment shall be entered against the respondent.
  • We recognize that prosecution of a trademark application involves numerous regulatory requirements, and that whether an applicant has satisfied them often entails some degree of subjective judgment on the part of the examining attorney. Considerations of due process, as well as fairness to parties against whom allegations of examination error are asserted, dictate that such matters be solely a matter for ex parte determination, and not grounds for opposition or cancellation.
    • Flash & Partners S.P.A. v. I. E. Manufacturing LLC, Opposition No. 91191988 (TTAB 2010)
      • We recognize that prosecution of a trademark application involves numerous regulatory requirements, and that whether an applicant has satisfied them often entails some degree of subjective judgment on the part of the examining attorney. Considerations of due process, as well as fairness to parties against whom allegations of examination error are asserted, dictate that such matters be solely a matter for ex parte determination, and not grounds for opposition or cancellation. Saint-Gobain Abrasives, 66 USPQ2d at 1359 ("It would be manifestly unfair to penalize defendant for noncompliance with a requirement that was never made by the Examining Attorney."), citing Marshall Field & Co., 11 USPQ2d 1355.
  • In the cancellation proceeding, priority is in issue.
    • Texas Department of Tansportation V. Richard Tucker, Cancellation No. 92030882 & Opposition No. 91165417 (TTAB 2010)
      • By contrast, in the cancellation proceeding, priority is in issue. See Brewski Beer Co. v. Brewski Brothers Inc., 47 USPQ2d 1281, 1283-84 (TTAB 1998)(In a cancellation proceeding where both parties have registrations, each can rely on the filing date of the application resulting in its registration, but the evidence of record otherwise determines priority).
  • The grounds available to petition to cancel a registration which is more than five years old are limited.
    • Prakash Melwani v. Allegiance Corporation, Opposition No. 91190682 (TTAB 2010)
      • FOOTNOTE 14 “The grounds available to petition to cancel a registration which is more than five years old are limited. Trademark Act §§ 14(3) and (5), 15 U.S.C. §§ 1064(3) and (5). See also Trademark Rule 2.111, 37 C.F.R. § 2.111; and TBMP § 307.01 (2d ed. rev. 2004). Consequently, ESTTA requires a petitioner to state the statutory basis for cancellation of a registration more than five years old and presents only valid options for selection. In the event a petitioner believes that cancellation is proper upon a ground which does not appear on the ESTTA form, the petitioner may file a petition to cancel by paper. In this rare, latter case, it is the Board's routine practice to review the petition to cancel to ascertain that the petition to cancel a registration more than five years old is based on a valid ground.”
  • Unlike a notice of opposition, a petition to cancel a registration issued on the Principal Register on a claim that the mark is merely descriptive may be filed at any time within five years from the date of the registration of the mark.
    • The Equine Touch Foundation, Inc. v. Equinology, Inc., Cancellation No. 92050044 (TTAB 2009)
      • If this case were an opposition proceeding, and October 9, 2008 had been the deadline for filing a notice of opposition, proof of subsequent service of the notice on defendant or its counsel would be insufficient and the case would have to be dismissed as a nullity. See Springfield Inc. v. XD, 86 USPQ2d 1063 (TTAB 2008) and In re Sasson Licensing Corp., 35 USPQ2d 1510, 1512 (Comm’r 1995).6 However, unlike a notice of opposition wherein an opposer cannot remedy a failure to comply with the service requirements if the remedy is provided after the close of the opposition period, as originally set or as extended, a petition to cancel a registration issued on the Principal Register on a claim that the mark is merely descriptive may be filed at any time within five years from the date of the registration of the mark. Since the mark in this case registered on September 14, 2004, petitioner has until the fifth anniversary of the date of the registration, namely, September 14, 2009, to properly file a petition to cancel asserting a claim of descriptiveness.
  • Since the TTAB can cancel registrations in whole or in part, applicant could have sought to restrict the description of goods in the cited registration by filing a partial petition to cancel the cited registration and alleging that the proposed restriction will avoid a likelihood of confusion and that registrant is not using the mark on the products being excluded from the registration.
    • In re Thor Tech, Inc., Serial No. 78634024 (TTAB 2009)
      • FOOTNOTE 11 “Applicant was not without a remedy. Section 18 of the Trademark Act of 1946 gives the Board the equitable power to cancel registrations in whole or in part, “restrict the goods or services identified in an application or registration,” or to “otherwise restrict or rectify . . . the registration of a registered mark.” 15 U.S.C. §1068; Trademark Rule 2.133(b). See also TBMP §309.03(d)(2d ed. rev. 2004) and cases cited therein. Accordingly, applicant could have sought to restrict the description of goods in the cited registration to “industrial and commercial trailers sold to professional purchasers” and excluding recreational vehicles by filing a partial petition to cancel the cited registration and alleging that the proposed restriction will avoid a likelihood of confusion and that registrant is not using the mark on the products being excluded from the registration. Eurostar Inc. v. “Euro-Star” Reitmoden GmbH & Co., 34 USPQ2d 1266, 1271 (TTAB 1994).”
Flash & Partners S.P.A. v. I. E. Manufacturing LLC, Opposition No. 91191988 (TTAB 2010) Texas Department of Tansportation V. Richard Tucker, Cancellation No. 92030882 & Opposition No. 91165417 (TTAB 2010) The Equine Touch Foundation, Inc. v. Equinology, Inc., Cancellation No. 92050044 (TTAB 2009) In re Thor Tech, Inc., Serial No. 78634024 (TTAB 2009) L. & J.G. Stickley, Inc. v. Ronald C. Cosser, Cancellation No. 92040202, (TTAB 2007) Otto International, Inc. v. Otto Kern GMBH, Cancellation No. 92046167, (TTAB 2007) FINANZ ST. HONORE, B.V. v. JOHNSON & JOHNSON, Cancellation No. 92044444 and 91161028 (TTAB 2007) National Rural Electric Cooperative Association v. Suzlon Wind Energy Corporation, Cancellation No. 92043377, (TTAB 2006) The NASDAQ Stock Market, Inc. v. Antartica, S.r.l., Opposition No. 91121204, (TTAB 2003) Grand Total
Springfield Inc. v. XD, 86 USPQ2d 1063 (TTAB 2008) 1
Carefirst of Maryland Inc. v. FirstHealth of the Carolinas Inc., 77 USPQ2d 1492 (TTAB 2005) 1
Saint-Gobain Abrasives Inc. v. Unova Indus. Automation Syst. Inc., 66 USPQ2d 1355 (TTAB 2003) 1
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000) 1
Phonak Holding AG v. ReSound GmbH, 56 USPQ2d 1057 (TTAB 2000) 1
Brewski Beer Co. v. Brewski Brothers Inc., 47 USPQ2d 1281 (TTAB 1998) 1
Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752 (Fed. Cir. 1998) 1
In re Sasson Licensing Corp., 35 USPQ2d 1510 (Comm'r 1995) 1
West Florida Seafood Inc. v. Jet Restaurants Inc., 31 F.3d 1122, 31 USPQ 1660 (Fed. Cir. 1994) 2
Eurostar Inc. v. "Euro-Star" Reitmoden GmbH & Co., 34 USPQ2d 1266 (TTAB 1994) 1
Eastman Kodak Co. v. Bell & Howell Document Management Products Co., 994 F.2d 1569, 26 USPQ2d 1912 (Fed. Cir. 1993) 1
Martahus v. Video Duplication Services Inc., 3 F.3d 417, 27 USPQ2d 1846 (Fed. Cir. 1993) 1
Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307 (Fed. Cir. 1989) 1
Century 21 Real Estate Corp. v. Century Life of Am., 10 USPQ2d 2034 (TTAB 1989) 1
Marshall Field & Co. v. Mrs. Fields Cookies, 11 USPQ2d 1355 (TTAB 1989) 1
Lipton Industries Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982) 1
Clubman's Club Corporation v. Martin, 188 USPQ 455 (TTAB 1975) 1
Cosmetically Yours Inc. v. Clairol Inc., 424 F.2d 1385, 165 USPQ 515 (CCPA 1970) 1
Contour Chair-Lounge Co. v. The Englander Co., 324 F.2d 186, 139 USPQ 285 (CCPA 1963) 1
Grand Total 4 1 2 1 6 2 1 1 2 20

Sec. 1064. Cancellation of registration

A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, including as a result of a likelihood of dilution by blurring or dilution by tarnishment under section 1125(c) of this title, by the registration of a mark on the principal register established by this chapter, or under the Act of March 3, 1881, or the Act of February 20, 1905:
    1. (1) Within five years from the date of the registration of the mark under this chapter.
    2. (2) Within five years from the date of publication under section 1062(c) of this title of a mark registered under the Act of March 3, 1881, or the Act of February 20, 1905.
    3. (3) At any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or is functional, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of section 1054 of this title or of subsection (a), (b), or (c) of section 1052 of this title for a registration under this chapter, or contrary to similar prohibitory provisions of such prior Acts for a registration under such Acts, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used. If the registered mark becomes the generic name for less than all of the goods or services for which it is registered, a petition to cancel the registration for only those goods or services may be filed. A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.
    4. (4) At any time if the mark is registered under the Act of March 3, 1881, or the Act of February 20, 1905, and has not been published under the provisions of subsection (c) of section 1062 of this title.
    5. (5) At any time in the case of a certification mark on the ground that the registrant (A) does not control, or is not able legitimately to exercise control over, the use of such mark, or (B) engages in the production or marketing of any goods or services to which the certification mark is applied, or (C) permits the use of the certification mark for purposes other than to certify, or (D) discriminately refuses to certify or to continue to certify the goods or services of any person who maintains the standards or conditions which such mark certifies:
Provided, That the Federal Trade Commission may apply to cancel on the grounds specified in paragraphs (3) and (5) of this section any mark registered on the principal register established by this chapter, and the prescribed fee shall not be required. Nothing in paragraph (5) shall be deemed to prohibit the registrant from using its certification mark in advertising or promoting recognition of the certification program or of the goods or services meeting the certification standards of the registrant. Such uses of the certification mark shall not be grounds for cancellation under paragraph (5), so long as the registrant does not itself produce, manufacture, or sell any of the certified goods or services to which its identical certification mark is applied.

 

 

Sec. 1127. Construction and definitions; intent of chapter

In the construction of this chapter, unless the contrary is plainly apparent from the context--
The United States includes and embraces all territory which is under its jurisdiction and control.
The word ``commerce'' means all commerce which may lawfully be regulated by Congress.
The term ``principal register'' refers to the register provided for by sections 1051 to 1072 of this title, and the term ``supplemental register'' refers to the register provided for by sections 1091 to 1096 of this title.
The term ``person'' and any other word or term used to designate the applicant or other entitled to a benefit or privilege or rendered liable under the provisions of this chapter includes a juristic person as well as a natural person. The term ``juristic person'' includes a firm, corporation, union, association, or other organization capable of suing and being sued in a court of law.
The term ``person'' also includes the United States, any agency or instrumentality thereof, or any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States. The United States, any agency or instrumentality thereof, and any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.
The term ``person'' also includes any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.
The terms ``applicant'' and ``registrant'' embrace the legal representatives, predecessors, successors and assigns of such applicant or registrant.
The term ``Director'' means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.
The term ``related company'' means any person whose use of a mark is controlled by the owner of the mark with respect to the nature and quality of the goods or services on or in connection with which the mark is used.
The terms ``trade name'' and ``commercial name'' mean any name used by a person to identify his or her business or vocation. The term ``trademark'' includes any word, name, symbol, or device, or any combination thereof--
    1. (1) used by a person, or
    2. (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.
The term ``service mark'' means any word, name, symbol, or device, or any combination thereof--
    1. (1) used by a person, or
    2. (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown. Titles, character names, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor.
The term ``certification mark'' means any word, name, symbol, or device, or any combination thereof--
    1. (1) used by a person other than its owner, or
    2. (2) which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register established by this chapter,
to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person's goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.
The term ``collective mark'' means a trademark or service mark--
    1. (1) used by the members of a cooperative, an association, or other collective group or organization, or
    2. (2) which such cooperative, association, or other collective group or organization has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
and includes marks indicating membership in a union, an association, or other organization.
The term ``mark'' includes any trademark, service mark, collective mark, or certification mark.
The term ``use in commerce'' means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce--
    1. (1) on goods when--
      1. (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
      2. (B) the goods are sold or transported in commerce, and
    2. (2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.
A mark shall be deemed to be ``abandoned'' if either of the following occurs:
    1. (1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. ``Use'' of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.
    2. (2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining abandonment under this paragraph.
The term ``colorable imitation'' includes any mark which so resembles a registered mark as to be likely to cause confusion or mistake or to deceive.
The term ``registered mark'' means a mark registered in the United States Patent and Trademark Office under this chapter or under the Act of March 3, 1881, or the Act of February 20, 1905, or the Act of March 19, 1920. The phrase ``marks registered in the Patent and Trademark Office'' means registered marks.
The term ``Act of March 3, 1881'', ``Act of February 20, 1905'', or ``Act of March 19, 1920'', means the respective Act as amended.
A ``counterfeit'' is a spurious mark which is identical with, or substantially indistinguishable from, a registered mark.
The term ``domain name'' means any alphanumeric designation which is registered with or assigned by any domain name registrar, domain name registry, or other domain name registration authority as part of an electronic address on the Internet.
The term ``Internet'' has the meaning given that term in section 230(f)(1) of title 47.
Words used in the singular include the plural and vice versa.
The intent of this chapter is to regulate commerce within the control of Congress by making actionable the deceptive and misleading use of marks in such commerce; to protect registered marks used in such commerce from interference by State, or territorial legislation; to protect persons engaged in such commerce against unfair competition; to prevent fraud and deception in such commerce by the use of reproductions, copies, counterfeits, or colorable imitations of registered marks; and to provide rights and remedies stipulated by treaties and conventions respecting trademarks, trade names, and unfair competition entered into between the United States and foreign nations.