Hurdles to Bringing a U.S. Trademark Proceeding

Lawyer holding briefcase jumping over a low hurdle

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.

A Saudi Arabian trading company petitioned the Trademark Trial and Appeal Board (TTAB) to cancel a U.S. registration of FLASH & Design for a variety of cleaning compounds. 

American in small letters above FLASH in larger letters, both at an angle up to the right on top of a red background with white lines from left to right

The Petitioner claimed that the Registrant had relied on its U.S. registration in seeking to cancel Petitioner’s two Saudi Arabian registrations of FIGHTER FLASH & Design.

Fighter in small letters above FLASH in larger letters, both at an angle up to the right on top of a blue background with white lines from left to right.

The U.S. Registrant moved to dismiss for failure to state a claim upon which relief could be granted.  It argued that the Petitioner (1) had no U.S. manufacturing, (2) was not a competitor of the Registrant in the U.S., (3) was a Saudi Arabian company, and (4) had not filed any U.S. trademark applications for its marks.  The Petitioner responded that the use of Registrant’s U.S. registration as a sword in Saudi Arabian proceedings demonstrated that the Petitioner had a real interest and was not a mere intermeddler lacking entitlement to relief in the U.S. proceeding.

The TTAB mentioned prior cases in which standing had been found when a complainant had pleaded a threat to its reputational interest in the U.S., a refusal of its U.S. trademark application, or deceptive advertising of its goods in the U.S.  None of these facts applied to this proceeding since the Petitioner was relying only on challenges to its foreign marks in foreign proceedings. 

The TTAB held that the Petitioner’s claim was not within the zone of interests protected by the U.S Trademark Act so it was insufficient to give the Petitioner standing.  However, the TTAB allowed the Petitioner 20 days to cure its defective pleading, if possible.

For completeness, the TTAB also commented on the Petitioner’s pleaded substantive grounds for cancellation: 

Fraud (an intent to deceive the U.S. Patent and Trademark Office).  The Petitioner had alleged that the Registrant’s claimed date of first use was knowingly false.  The TTAB pointed out that the date of first use is not material to the Office’s decision to approve an application, so that allegation was insufficient to show fraud.  It also warned that fraud must be proven to the hilt by clear and convincing evidence.

Abandonment (non-use in the U.S. for more than three years or for a lesser period with an intent not to resume).  The Petitioner had alleged that the Registrant’s mark had not been used for more than three years.  The TTAB said that this could state a claim (provided the Petitioner could establish standing to assert it in a U.S. proceeding).  But the TTAB also reminded the Petitioner that its non-use allegation required evidence showing a factual basis likely to be obtained after a reasonable opportunity for discovery or investigation.

AHI Al-Sara Group for Trading v. American Flash, Inc., Cancellation No. 92079775 (T.T.A.B. January 23, 2023).

Author’s Note:  It normally is easy to satisfy the U.S. pleading requirements, which require only a sufficient allegation of facts to put the defendant on notice of the basis for the claims against it.  But if you do not show an effect on U.S. commerce to establish standing, or a factual showing, which if established, would satisfy the elements of a cause of action, you can fail to clear even that low hurdle.

For further information, please contact William M. Borchard or your CLL attorney.

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