WHAT HAPPENS AFTER THE PETITION TO CANCEL (the opening pleading) IS FILED?
STEPS FOR A TRADEMARK CANCELLATION
(for a USPTO registered trademark)
Registered trademarks that issued may be contested and canceled by anyone who has standing and grounds. Grounds that negates the defendant's right to registration may be raised for cancellation except that incontestable trademarks have a more limited list of grounds on which they can be contested.
Standing is why a person (or entity) believes it is or will be damaged by the registration sought to be canceled. At the initial pleading stage, all that is required is that a plaintiff allege facts sufficient to show a “real interest” in the proceeding, and a “reasonable basis for its belief of damage." To plead a "real interest," plaintiff must allege a "direct and personal stake" in the outcome of the proceeding. The allegations in support of plaintiff's belief of damage must have a reasonable basis "in fact." (See TBMP 309.03(b) Standing for case definitions of “real interest,” “direct and personal stake,” “reasonable basis,” and “in fact.”)
Potential registrars of merely descriptive terms may be opposed and damaged assumed when the mark sought to be registered is descriptive of goods and opposer has a sufficient real interest in using the same descriptive words in its business. DeWalt, Inc. v. Magna Power Tool Corp., 289 F.2d 656, 129 USPQ 275, 280 (CCPA 1961).
Where registration is being cancelled on the ground that applicant's mark, as applied to its goods and/or services, is merely descriptive of them, registrant may take the position that its mark is not merely descriptive, and, alternatively, assert a claim [with proof], under the provisions of Section 2(f) of the Act, 15 U.S.C. § 1052(f), that its mark has become distinctive [acquired distinctiveness] of its goods and/or services in commerce. (See Trademark Trial and Appeal Board Manual of Procedure (TBMP) 1215 Alternative Positions.)
WHAT ARE THE STEPS IN A CANCELLATION PROCEEDING?
TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE
TBMP June 2014
TBMP 701: [ ]
On receipt of a properly filed notice of opposition or petition to cancel (or at the time described in 37 CFR § 2.92 for an interference, see TBMP § 1003, or 37 CFR § 2.99(c) for a concurrent use proceeding which is not based on a court decision or a prior Board decision, see TBMP § 1106.04), the Board sends out a notice advising the parties of the institution of the proceeding. The notice includes a trial order setting deadlines for the answer, discovery conference, initial and expert disclosures, discovery, and each party’s required pretrial disclosures, and assigning each party's time for taking testimony and introducing other evidence in the case. [Note 1.] See TBMP § 310.01 (oppositions and cancellations); TBMP § 1007 (interferences) and TBMP § 1106.04
(concurrent use proceedings). See also TBMP § 403.01.
In the trial order, the Board schedules a 30-
If there is a counterclaim, or if proceedings have been consolidated and one party is in the position of plaintiff in one of the involved proceedings and in the position of defendant in another, or if there is an interference or a concurrent use registration proceeding involving more than two parties, the Board schedules testimony periods as specified in 37 CFR § 2.121 (b) (2), i.e., giving each plaintiff a period for presenting its case in chief as against each defendant, giving each defendant a period for presenting its case and meeting the case of each plaintiff, and giving each plaintiff a period for rebuttal. The testimony periods are separated from the discovery period by a 60-
A party may not take testimony outside of its assigned testimony period, except by stipulation of the parties approved by the Board, or, on motion, by order of the Board. [Note 7.]
Testimony periods may be rescheduled, extended, or reopened by stipulation of the parties approved by the Board, or on motion granted by the Board, or by order of the Board. [Note 8.] See TBMP § 501 and TBMP § 509 regarding stipulations and motions to extend or reopen. A stipulation or consented motion to reschedule a deadline for pretrial disclosures and subsequent testimony periods or to reschedule the closing date for discovery and to reschedule subsequent deadlines for pretrial disclosures and testimony periods must be submitted to the Board and must be presented in the form used in a trial order, specifying the deadline for each subsequent period, including, as applicable, the deadline for initial, expert and pretrial disclosures, and the closing date for discovery and testimony periods. [Note 9.] It is preferable, where such a motion is unconsented, that the motion request that the new deadlines be determined, and any period or periods be set to run, from the date of the Board's decision on the motion. See TBMP § 509.02.
The resetting of the closing date for discovery results in the automatic rescheduling of pretrial disclosure deadlines and testimony periods, without action by any party. However, the resetting of a party's time to respond to an outstanding request for discovery does not result in the automatic rescheduling of the closing date for discovery, pretrial disclosure and expert disclosure deadlines, and/or testimony periods. [Note 10.] When a party's time to respond to an outstanding request for discovery is reset, the closing date for discovery, pretrial disclosure and expert disclosure deadlines, and/or testimony periods will be rescheduled only on stipulation of the parties approved by the Board, or on motion granted by the Board, or by order of the Board. [Note 11.]
In Board inter partes proceedings, the taking of testimony depositions during the assigned testimony periods corresponds to the trial in court proceedings, and the trial period commences with the opening of the first testimony period. [Note 12.] See TBMP § 504.01. Cf. TBMP § 528.02.
1. See 37 CFR § 2.120(a) and 37 CFR § 2.121.
2. See 37 CFR § 2.121(b)(1) and 37 CFR § 2.121(c).
3. See Stagecoach Properties, Inc. v. Wells Fargo & Co., 199 USPQ 341, 356 (TTAB 1978) (thirty-
4. See 37 CFR § 2.121(e).
5. See 37 CFR § 2.121(b)(2) and 37 CFR § 2.121(c). Examples of trial schedules can be found in the Appendix of Forms.
6. See 37 CFR § 2.96 and 37 CFR § 2.99(e).
7. See 37 CFR § 2.121 (a)(1). See also Baseball America Inc. v. Powerplay Sports, 71 USPQ2d 1844, 1846 n.8 (TTAB 2004) (documentary evidence submitted outside assigned testimony period given no consideration); M-
8. See Fed. R. Civ. P. 6(b); 37 CFR § 2.121 (a)(1), 37 CFR § 2.121(c) and 37 CFR § 2.121(d). See, e.g., Fairline Boats plc v. New Howmar Boats Corp., 59 USPQ2d 1479, 1480 (TTAB 2000) (motion to extend testimony filed on last day with vague references to settlement and no detailed information concerning apparent difficulty in identifying and scheduling its witnesses for testimony denied); Luemme Inc. v. D.B. Plus Inc., 53 USPQ2d 1758, 1760 (TTAB 1999) (motion to extend denied where sparse motion contained insufficient facts on which to find good cause); Harjo v. Pro-
9. See 37 CFR § 2.121(d).
10. See PolyJohn Enterprises Corp. v. 1-
11. See 37 CFR § 2.121 (a)(1).
12. See Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988) (Board proceedings approximate the proceedings in a courtroom trial); Time Warner Entertainment Company v. Jones, 65 USPQ2d 1650, 1657 (TTAB 2002) (trial in a Board proceeding takes place during the testimony periods).
[STEPS IN A CANCELLATION PROCEEDING]
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PLAN FOR A SUCCESSFUL, STRONG TRADEMARK THAT WILL NOT BE SUCCESSFULLY OPPOSED OR CANCELED
To verify a potential trademark is strong, is available to use, and is ready to register, the process should be more than a direct hit federal search. To maximize the commercial strength and minimize the weaknesses of a trademark, we start with these five steps:
4) Verify the potential mark (as currently used) Functions As A Mark, and (this avoids specimen refusals, trade name refusals, and others. The USPTO is looking for valid use not just any use of a mark.)
5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing. (This avoids office actions to correct incorrect IDs which can slow down a registration. Incorrect IDs may be corrected during the prosecution of a trademark if they do not materially alter the mark or the ID. Correcting problems before application saves time and money. Filing in a new class after an application has been submitted to cure a problem ID is the same price as a new application in that class.)
*We don’t stop here but this is a good start!
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