Cancellation Proceedings Archives

Strings Attached: No Amendment for Trademark Application in Inter Partes Opposition Proceeding

The Trademark Trial & Appeal Board (Board) designated as precedential a decision denying a motion to amend and granting partial summary judgment based on a mistaken identification that did not match the goods sold using the trademark. Fender Musical Instruments Corporation v. Win-D-Fender, LLC, Opp. No. 91272326 (TTAB Sept. 22, 2022) (designated precedential Jan. 12, 2023) (Wolfson, Heasley, Cogins, ATJs) (By the Board).

Win-D-Fender applied for a trademark to register the mark EN-D-FENDER for “musical instruments.” Fender opposed this registration on grounds of nonuse, likelihood of confusion and dilution by blurring and filed a motion for summary judgment on the ground of nonuse. Win-D-Fender then filed a motion to amend the identification of goods in its application from “musical instruments” to “musical instrument accessories, namely, an ambient wind foot joint guard for flute family instruments.”

The Board first considered Win-D-Fender’s motion to amend. Under the relevant trademark rules, an application that is subject to an inter partes proceeding may only be amended if the other party consents (Fender did not) and the Board gives approval, or if the Board grants a motion to amend.

Win-D-Fender filed its application via the Trademark Electronic Application System (TEAS). In a TEAS application, only the goods listed in the proper field can be considered for the identification of goods and broadening the scope of the identification is not permitted. In Win-D-Fender’s application, the only goods listed in the “Identification” field were “musical instruments.” Win-D-Fender argued that its application included a miscellaneous statement reading, “For Musical Instrument Accessories namely a wind guard mounted to a flute.” The Board determined, however, that the description was not in the proper field and therefore was not considered in the identified goods. The Board explained that the TEAS Plus instructions warn applicants to not use the TEAS Plus “Identification” field if it does not contain an accurate listing of the goods and services and to instead use the TEAS Standard filing option. The Board noted that although the identification of “musical instruments” may have been a mistake, it is settled that an established identification cannot later be expanded. The Board concluded that Win-D-Fender was limited to amendments that would narrow or clarify the type of “musical instruments.”

Win-D-Fender also argued that musical instrument accessories would fall under the general umbrella of musical instruments. The Board stated that while musical instruments may use accessories, the accessories themselves are not musical instruments and are not encompassed in the “musical instrument” class. The Board, therefore, denied the motion to amend the identification of goods.

The Board next considered Fender’s motion for summary judgment on the ground of nonuse. An application based on use of the mark in commerce is void if the mark was not used in commerce in connection with the goods identified in the application. As the Board had already decided, Win-D-Fender’s mark was limited to musical instruments and did not include accessories. Fender specifically pointed to an interrogatory response in which Win-D-Fender stated that the products sold under the [...]

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The Naked Truth About Trademark Cancellation: Only Harm, No Proprietary Interest Required

The US Court of Appeals for the Federal Circuit determined that a contracting party that contractually abandoned any proprietary interest in a mark may still bring a cancellation action if it can “demonstrate a real interest in the proceeding and a reasonable belief of damage.” Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, Case No. 19-1567 (Fed. Cir. July 24, 2020) (Reyna, J.) (Wallach, J., dissenting).

Australian sold condoms with the marks NAKED and NAKED CONDOMS, first in Australia in early 2000, then in the United States in 2003. Two years later, Australian learned that Naked TM’s predecessor had registered a trademark NAKED for condoms in September 2003. Australian and Naked TM communicated by email regarding use of the mark for a few years. Naked TM contended that the parties reached an agreement; Australian disagreed and said no final terms were agreed upon. Australian filed a petition to cancel the NAKED trademark registration. Ultimately, and after trial, the Trademark Trial and Appeal Board (TTAB) concluded that Australian lacked standing because it had reached an informal agreement that Naked TM reasonably believed was an abandonment of any right to contest Naked TM’s registration of NAKED. Thus, the TTAB found that Australian lacked a real interest in the proceeding because it lacked a proprietary interest in the challenged mark. Australian appealed.

The Federal Circuit reversed. First, the Court clarified that the proper inquiry was a matter of proving an element of the cause of action under 15 USC § 1064 rather than standing. The Court explained that, contrary to the TTAB’s conclusion, “[n]either § 1064 nor [its] precedent requires that a petitioner have a proprietary right in its own mark in order to demonstrate a cause of action before the Board.” Assuming without deciding that the TTAB correctly determined that Australian had contracted away its rights, the Court found that fact irrelevant. Ultimately, even though an agreement might be a bar to showing actual damages, a petitioner need only show a belief that it has been harmed to bring a petition under § 1064.

The Federal Circuit found that Australian had a reasonable belief in its own damage and a real interest in the proceedings based on a history of two prior applications to register the mark, both of which the US Patent and Trademark Office rejected on the basis that they would have created confusion with Naked TM’s mark. The Court rejected Naked TM’s argument that Australian’s abandonment of those applications demonstrated there was no harm, instead concluding that Australian’s abandonment of its applications did not create an abandonment of its rights in the unregistered mark. Moreover, as a prophylactic rationale, the Court explained that Australian’s sales of products that might be found to have infringed the challenged registration also create a real interest and reasonable belief in harm.

Judge Wallach dissented. Although he agreed that the TTAB erred by imposing a proprietary-interest requirement to bring suit under § 1064, he disagreed that Australian properly demonstrated an alternative, legitimate interest—i.e., a belief [...]

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Strings Attached: No Amendment for Trademark Application in Inter Partes Opposition Proceeding

The Naked Truth About Trademark Cancellation: Only Harm, No Proprietary Interest Required

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