Trademark Law Alert--Trade Association Lacked Standing to Challenge Trademark Registration
It is well established that a trade association may be entitled to a statutory cause of action (also known as standing) to bring an opposition or cancellation against the registration of a mark. The association need not have a proprietary right in the contested mark, nor need it allege that it has an interest in using that mark.
All that is required is that the association’s claims fall within the zone of interests protected by the Trademark Act (that is, the complainant must have a real interest in the outcome of the proceeding). To do this, the association must demonstrate that the registration will proximately cause damage to the association’s own interests or those of its members. See, for example, Jewelers Vigilance Committee, Inc., v. Ullenberg Corp., 832 F.2d 490 (Fed. Cir. 1987) (Trade association members purchased rough diamonds from DeBeers Consolidated Mines Limited, which controlled approximately 85 percent of the market each year, so the association had standing to oppose an application to register a mark containing the word DeBeers).
However, in this cancellation proceeding, the Trademark Trial and Appeal Board (TTAB) held that the trade association had failed to meet its “low threshold” burden of establishing its entitlement to a statutory cause of action, and the TTAB therefore held that the trade association lacked the required standing.
Registrant's Mark Cancellation Petitioner's Intended Mark
The contested U.S. registration was for the image shown on the left for pet accessories. The registration stated that (1) the Chinese characters mean “opposition to tyranny begins with disdain for dictators,” “big,” and “buns will certainly reveal their fillings” in English, (2) the characters shown on the face of the image, which transliterated to “xi,” have no meaning in a foreign language, and (3) that the image does not identify a living individual.
The trade association, which represented Chinese manufacturers of pet food and pet products distributed in the U.S. and elsewhere, challenged the registration on various grounds. These included that the registered mark depicts President Xi and the Xi nickname for him, and that the mark is confusingly similar to the image shown on the right (the mark in the trade association’s pending U.S. intent to use application). The Chinese characters in the trade association’s intended mark mean “Zhejiang Pet Products” and “are the best” in English.
The TTAB pointed out that neither the trade association nor its members were President Xi or had any direct connection with him, so this asserted claim did not fall within the trade association’s protected zone of interests.
Further, the alleged harm was held to be speculative and highly attenuated since the evidence did not show why the Chinese government would mistakenly associate the registered mark with the trade association or its members. In addition, the evidence did not demonstrate that U.S. consumers know of the allegedly prominent Chinese trade association or its members, or that they would be harmed even if the registrant sold low quality products.
The TTAB also was deeply skeptical that the trade association or its members intended to use the mark depicted in the association’s U.S. application. Rather, the TTAB found that the evidence strongly suggested that the association’s intent to use this mark was formed after it had knowledge of the registered mark.
Finally, the TTAB stated that the failure to establish statutory entitlement, by itself, was a sufficient basis to deny this cancellation so the TTAB need not reach the substance of the claim. Nevertheless, the TTAB found that the trade association’s mark was not at all similar to the registered mark.
Accordingly, the trade association’s petition to cancel the registration was denied.
For further information, please contact William M. Borchard or your CLL attorney.
Senior Counsel
Email | 212.790.9290
Bill has handled domestic and international trademark and copyright matters at the highest level for over 60 years. He has counseled and represented clients on domestic and international trademark matters concerning clearance, registration, proper use, licensing, contested administrative proceedings and infringement claims. He became Senior Counsel in January 2024 and is now focusing on providing guidance and advice to other lawyers within our firm and writing informative and engaging articles on intellectual property law developments.