- Posts by William BorchardCounsel
Bill advises on domestic and international trademark matters at the highest level. His practice consists of counseling clients and handling domestic and international trademark and copyright matters including clearance ...
A previous Blog post discussed “How to Preserve U.S. Rights in a Registered Trademark that is Not in Use.”
Now, a precedential decision by the Trademark Trial and Appeal Board (TTAB) is instructive as to the reverse—how to cancel a U.S. registration for an abandoned trademark.
The Trademark Trial and Appeal Board (TTAB) appears to have increased the standard of evidence to support a refusal to register a slogan as a trademark, on the ground that it fails to function as a mark.
Merely offering your goods under a trademark on a website or in a store is insufficient to support an allegation that you have used your trademark in U.S. commerce for a trademark application. You must actually sell or transport the goods bearing the mark to an unrelated party through U.S. interstate (or foreign) commerce. Similarly, shipment of goods bearing the mark from a manufacturer to the trademark owner, without more, is not sufficiently public to qualify as use for a trademark application. These use requirements were clearly applied by the Trademark Trial and Appeal Board (TTAB), which cancelled a registration for nonuse.
If you happen to find yourself in Switzerland or France in search of gruyere cheese, you might be surprised to learn that it may taste a bit different from the gruyere you have come to know and enjoy in the US. You also might be surprised to learn that the term “gruyere” has different meanings in the EU and the US.
This is because the term “gruyere” is recognized under EU law as a protected designation of origin (PDO or AOP) and a protected geographical indication (PGI or IGP) since the alpine cow’s milk cheese product has been made according to a very specific aging and production process and has been produced in a specific location – the Gruyère regions of Switzerland and France - dating back to the early 12th century. Cheese that fails to meet these specifications is not allowed to be labeled as “gruyere.”
A foreign or domestic complainant in an opposition, cancellation or other proceeding against a U.S. trademark application or registration must have an interest that affects U.S. interstate or foreign commerce. This is commonly called having “standing.” Normally, this is a low threshold, but you can trip over it, especially if you are a non-U.S. complainant.
You may be able to assert “use analogous to trademark use” to claim priority over someone else who actually made technical use of a confusingly similar trademark or service mark before you did.
The Zeta Tau Alpha Sorority, which dates back to 1898 and is popularly known as ZTA, was refused registration of ZTA for jewelry (claiming use since at least 1915) and clothing items (claiming use since at least 1940), despite its ownership of an existing 2001 registration of this mark for association services, because of a 2020 registration of ZTA for a variety of housewares and kitchen items owned by a Chinese company (claiming use since 2019). The Trademark Trial and Appeal Board (TTAB) affirmed this refusal. Why did this happen, and how can you avoid the same result?
A trademark combining two words may evoke its own unique commercial impression—separate from the meanings of its component words--and be inherently registrable as a unitary term. But if each component word is merely descriptive or laudatory, the combination mark may retain the same meaning as its component words and may not be registrable on the Principal Register (which is for marks that are inherently distinctive) unless the mark has acquired a source identification distinctiveness (called “secondary meaning”).
A trademark is supposed to identify the source of the goods for which it is used and to distinguish them from the goods of others. Do you think the word “THE,” standing alone, has those qualities when it appears on clothing?
The Ohio State University (Ohio State) and Marc Jacobs Trademarks, L.L.C. (Marc Jacobs) both believe that THE identifies and distinguishes their respective identical clothing items.
Under a decision by the U.S. Court of Appeals for the Federal Circuit (Federal Circuit), if you enter into a contract requiring disputes to be resolved by lawsuits brought in a specified court, you may be precluded from challenging the validity of a patent or trademark in a proceeding in the Patent Trial and Appeals Board (PTAB) or the Trademark Trial and Appeals Board (TTAB) of the U.S. Patent and Trademark Office (USPTO).