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How to Make Sure You Don’t Overlook a Claim in a TTAB Opposition or Cancellation

April 17, 2017TTAB Proceedings

TTAB causes of action: lining up the chess pieces

Systems are incredibly powerful in the practice of law. By system, I mean a set of detailed methods, procedures, and routines used to perform an activity. When it comes to filing a notice of opposition or petition for cancellation or counterclaims in a Trademark Trial and Appeal Board ("TTAB") proceeding, I have a very simple system that I use to make sure that I am not omitting any causes of action. OK - it's really just a checklist, but it is very effective. At the end of this blog post, you'll have an opportunity to download a copy of the checklist. Let's review the available causes of action in TTAB proceedings.

A List of TTAB Causes of Action

Priority & Likelihood of Confusion | 15 U.S.C. § 1052(d)

This is the go-to claim in most TTAB proceedings. In order to state a claim under § 2(d), a party must allege (1) priority and (2) likelihood of confusion. Herbko International, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1161-62 (Fed. Cir. 2002).

Merely Descriptive | 15 U.S.C. § 1052(e)

In order to state a claim for mere descriptiveness under § 2(e)(1), a party must allege facts showing that the mark merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of the relevant goods or services. Callaway Vineyard & Winery v. Endsley Capital Group Inc., 63 USPQ2d 1919, 1921 (TTAB 2002).

Deceptively Misdescriptive | 15 U.S.C. § 1052(e)

In order to state a claim for deceptive misdescriptiveness, a party must plead that (1) the mark sought to be registered is misdescriptive of the goods identified in the application, and (2) the misdescription is deceptive, i.e., plausible and likely to be believed by purchasers. Humanetics Corp. v. Neways, Inc., 2004 TTAB LEXIS 215 (TTAB 2004).  Basically, a term is merely descriptive if it conveys an immediate idea of an ingredient, quality, characteristic, function or feature of the product with which it is used. If, however, the mark would be merely descriptive if it conveyed an accurate or true idea, but instead the idea is false (although plausible), then the term is deceptively misdescriptive.

Primarily Geographically Descriptive | 15 U.S.C. § 1052(e)

In order to state a claim that a mark is primarily geographically descriptive, a party must allege that (1) the primary significance of the mark is a generally known geographic location; (2) the goods or services originate in the place identified in the mark; and (3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark (i.e., a services/place association). K. Hov IP II, Inc. v. Benner-Ortega, 2012 TTAB LEXIS 260 (TTAB 2012).

Primarily Geographically Deceptively Misdescriptive | 15 U.S.C. § 1052(e)

In order to state a claim that a mark is primarily geographically deceptively misdescriptive, a party must allege that (1) the primary significance of the mark is a generally known geographic location; (2) the consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark (i.e., that a goods-place association exists), when in fact the goods do not come from that place; and (3) the misrepresentation would be a material factor in the consumer's decision to purchase the goods. Corporacion Habanos, S.A. v. Guantanamera Cigars Co., 2012 TTAB LEXIS 41 (TTAB 2012).

Primarily Merely a Surname | 15 U.S.C. § 1052(e)

In order to state a claim that a mark is primarily merely a surname, a party must allege that the primary significance of the term to the purchasing public would be that of a surname. The party may also want to plead facts supporting the factors considered in determining whether a term is primarily a surname include, namely, (i) the rarity of use of the term as a surname; (ii) whether anyone connected with applicant has the surname; (iii) whether the term in question has any recognized meaning other than that of a surname; (iv) whether the term has the "look and sound" of a surname; and, if applicable, (v) whether the stylization of the term is so great as to create a separate commercial impression sufficient to render the term more than merely a surname. Bridgestone/Firestone North American Tire, LLC v. Silverstone Berhad, 2003 TTAB LEXIS 142 (TTAB 2003).

Functional | 15 U.S.C. § 1052(e)

In order to state a claim that a mark comprises matter that is functional, a party must allege that the matter is essential to the use or purpose of the article or it affects the cost or quality of the article. Qualitex Co. v. Jacobson Prods. Co., Inc., 514 U.S. 159, 115 S. Ct. 1300, 131 L. Ed. 2d 248, 34 USPQ2d 1161, 1163-1164 (1995). A party may also want to include allegations directed at the four factors considered in determining whether a proposed mark is functional: (1) the existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered; (2) advertising by the applicant that touts the utilitarian advantages of the design; (3) facts pertaining to the availability of alternative designs; and (4) facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.

Geographically Deceptive | 15 U.S.C. § 1052(a)

The Federal Circuit has held that the test for determining whether a mark is geographically deceptive under Section 2(a) is the same as determining whether a mark is primarily geographically deceptively misdescriptive under Section 2(e)(3). In re California Innovations Inc., 329 F.3d 1334 (Fed. Cir. 2003); United States Playing Card Co. v. Harbro, LLC, 2006 TTAB LEXIS 484 (TTAB 2006).

Disparages Members of a Particular Group | 15 U.S.C. § 1052(a)

Although it is hard to locate specific elements that need to be pled for this claim, a party should probably allege facts that would meet the test used by the TTAB to determine if a mark is disparaging under § 2(a): (i) what is the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods or services; and (2) if that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group. In re Squaw Valley Development Co., 2006 TTAB LEXIS 189 (TTAB 2006).

Deceptiveness | 15 U.S.C. § 1052(a)

In order to state a claim for deceptiveness under §2(a), a party must allege facts supporting the following three elements: (1) that applicant’s mark misrepresents or misdescribes the character, quality, function, composition, or use of applicant’s goods or services; (2) that public is likely to believe the misdescription describes applicant’s goods or services; and (3) that the misdescription is likely to affect the purchasing decision. In re Budge Mf’g Co., Inc., 857 F.2d 773, 775 (Fed. Cir. 1988).

Immoral or Scandalous Matter | 15 U.S.C. § 1052(a)

In order to state a claim for immoral or scandalous matter under § 2(a), a party must allege facts showing that a substantial composite of the general public views the mark at issue to be immoral or scandalous in the context of the goods, the relevant marketplace, and contemporary attitudes. Boston Red Sox Baseball Club LP v. Sherman, 88 U.S.P.Q.2d 1581 (TTAB 2008).

Falsely Suggests a Connection | 15 U.S.C. § 1052(a)

In order to state a claim for false suggestion of a connection under §2(a), an opposer must allege facts supporting the following four elements: (1) that the applicant’s mark is the same or a close approximation of opposer’s previously used name or identity;(2) that the mark would be recognized as such; (3) that the opposer is not connected with the activities performed by the applicant under the mark; and (4) that the opposer’s name or identity is of sufficient fame or reputation that when the applicant’s mark is used on its goods or services, a connection with the opposer would be presumed. Buffett v. Chi-Chi’s, Inc., 226 U.S.P.Q. 428, 1985 TTAB LEXIS 80, at *6–7 (TTAB 1985).

Geographical Indication for Wine or Spirits Identifying Place Other Than Origin After January 1, 1996 | 15 U.S.C. § 1052(a)

In order to state this claim, a party just needs to recite facts supporting the statutory language, namely, that the mark consists of or comprises a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after January 1, 1996.

No Bona Fide Use in Commerce on Filing Date of Use-Based Application | 15 U.S.C. § 1051(a)

In order to state this claim, a party must plead that there was no use in commerce prior to the filing date of a use-based trademark application. CarX Service Systems, Inc. v. Exxon Corp., 1982 TTAB LEXIS 76 (TTAB 1982).

No Bona Fide Use in Commerce on Filing Date of Statement of Use | 15 U.S.C. § 1051

In order to state this claim, a party must plead that there was no use in commerce on or prior to the filing date of the statement of use. Alliance Entertainment Corp. v. Russ, 2007 TTAB LEXIS 114 (TTAB LEXIS 2007).

No Bona Fide Intent to Use on Filing Date of Intent-to-Use Application | 15 U.S.C. § 1051(b)

In order to state this claim, a party simply needs to allege that the applicant did not have a bona fide intent to use the mark in commerce in connection with the goods or services listed in the application. Beer v. Beer, 2016 TTAB LEXIS 571 (TTAB 2016). I also wrote a blog post on this topic entitled "ITU Trademark Applications: What's Intent Got To Do With It?"

Mark is a Mere Background Design & Does Not Function as a Mark

In order to state a claim that mark is a mere background design, a party must allege that the design is not inherently distinctive, nor has it acquired distinctiveness, such that it is does not create a commercial impression as an indication of origin separate and apart from the remainder of the mark. Board of Trustees v. Pitts, 2013 TTAB LEXIS 370 (TTAB 2013).

Applicant Not the Owner of the Mark at the Time of Application

In order to state a claim for non-ownership, a party must allege that the applicant of a use-based trademark application was not the owner of the mark sought to be registered at the time of filing. Conolty v. Conolty O'Conner NYC LLC, 2014 TTAB LEXIS 269 (TTAB 2014).

Ornamental

In order to state a claim that a mark is ornamental, a party only needs to allege that the mark in ornamental and has not acquired distinctiveness. Marino v. Laguna Lakes Community Association, Inc., 2016 TTABL LEXIS 37 (TTAB 2016).

Term Not Used as a Trademark

In order to plead this claim, a party needs to allege that the applicant or registrant has not used the mark in the application or registration as a trademark or service mark. Marshall Field & Co. v. Mrs. Fields Cookies, 1989 TTAB LEXIS 17 (TTAB 1989).

Multiple Marks in a Single Application (Phantom Marks)

In order to state a claim that a mark constitutes a phantom mark, a party must allege that an integral portion of the mark is being represented by a placeholder for a generic term or symbol that changes depending on the use of the mark. Jarrow Formulas, Inc. v. Albritton, 2012 TTAB LEXIS 194 (TTAB 2012).

Abandonment Due to Non-Use

In order to state a claim for abandonment due to non-use, a party must allege that use of a mark has been has been discontinued with intent not to resume such use. Alternatively, a party can rely on the presumption of abandonment by alleging non-use for three consecutive years. 15 U.S.C. § 1127.

Abandonment Due to Course of Conduct

In order to state a claim for this type of abandonment, a party must allege facts showing that the course of conduct of the trademark owner, including acts of omission as well as commission, has caused the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. 15 U.S.C. § 1127.

Name of a Particular Living Individual | 15 U.S.C. § 1052(c)

This claim just requires that the party allege facts supporting the statutory language, namely, that the mark consists of or comprises a name, portrait, or signature identifying a particular living individual without written consent. Watson v. Faulk, 2016 TTAB LEXIS 240 (TTAB 2016).

Generic | 15 U.S.C. § 1052(a)

In order to state a claim that a mark is generic, a party must allege that the term sought to be registered is understood by the relevant public primarily to refer to the category or class of goods or services at issue. Pilates Method Alliance, Inc. v. Pilates, Inc., 2004 TTAB LEXIS 404 (TTAB 2004); Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 2011 TTAB LEXIS 418 (TTAB 2011).

Dilution | 15 U.S.C. § 1125(c)

In order to state a claim for dilution under §43(c), a party must allege the following elements: (1) its mark is famous and distinctive; (2) its mark became famous and distinctive prior to the date applicant first used its mark; and (3) use by applicant of its marks is likely to dilute the distinctive quality of the plaintiff's famous mark. Citigroup Inc. v. Capital City Bank Group Inc., 94 USPQ2d 1645 (TTAB 2010).

Mark Used to Misrepresent Goods/Services | 15 U.S.C. § 1064(3)

In order to state a claim that mark is being used to misrepresent the source of the goods or services, a party must allege that the registrant is misrepresenting that the goods and/or services originate from a manufacturer or other entity when in fact those goods and/or services originate from another party. Otto International Inc. v. Otto Kern GmbH, 2007 TTAB LEXIS 62  (TTAB 2007). A pleading of misrepresentation of source "must be supported by allegations of blatant misuse of the mark by respondent in a manner calculated to trade on the goodwill and reputation of petitioner." Id.

Misuse of Federal Registration Symbol

In order to state a claim for misuse of a federal registration symbol, a party has to allege that the applicant used the registration symbol with the unregistered trademark with an intent to deceive the purchasing public or others in the trade into believe that the mark was registered. Copelands' Enterprises Inc. v. CNV Inc., 945 F.3d 1563 (Fed. Cir. 1991).

Fraud on the USPTO | In re Bose Corp.

Fraud on the USPTO remains a popular claim despite the fact that it is a hard claim to plead and ultimately win. In order to state a claim for fraud, a party must allege facts supporting the following elements: (1) the applicant made a false representation of fact in connection with the trademark application; (2) the false representation was material; and (3) the applicant made the false, material representation of fact knowingly. In re Bose Corporation, 580 F. 3d 1240 (Fed. Cir. 2009). Fraud is difficult to plead because the circumstances constituting the fraud must be pled with particularity. Fed. R. Civ. P. 9(b). Fraud is difficult to win because there has to be a subjective intent to deceive, which I previously wrote about in a lengthy post entitled "I Can't Believe It's Not Fraud. A Review of Commonly Rejected Fraud Claims by the TTAB."

Interference with Foreign Owner's Mark Under Article 8 of Pan American Convention

In order to state a claim for cancellation of mark pursuant to Article 8 of the Pan American Convention, a plaintiff must allege that it (i) enjoyed legal protection for its mark in another of the Contracting States prior to the date of the application for the registration it seeks to cancel; and either (ii) the registrant had knowledge of the use, employment, registration or deposit in any of the Contracting States of the plaintiff's mark for the specific goods in the defendant's registration, prior to adoption and use thereof or prior to the filing of the application of the mark which is sought to be cancelled; or (iii) it has traded or trades with the United States and that goods designated by its mark have circulated and circulate in the United States from a date prior to the filing of the application for registration of defendant's mark or prior to the adoption and use of the same. British-American Tobacco Co. Ltd. v. Philip Morris Inc., 2000 TTAB LEXIS 390 (TTAB 2000).

Claim or Issue Preclusion

In order to state a claim for claim preclusion (res judicata), a party must allege that (1) there is identity of parties (or their privies); (2) there has been an earlier final judgment on the merits of a claim; and (3) the second claim is based on the same set of transactional facts as the first. Mayer/Berkshire Corp. v. Berkshire Fashions Inc., 424 F.3d 1229 (Fed. Cir. 2005).

In order to state a claim for issue preclusion (collateral estopppel), a party must allege (1) identity of an issue in a prior proceeding, (2) the identical issue was actually litigated, (3) determination of the issue was necessary to the judgment in the prior proceeding, and (4) the party defending against preclusion had a full and fair opportunity to litigate the issue in the prior proceeding. Id.

Title of a Single Creative Work

Here, a party merely needs to allege that a mark is being used as the title of a single creative work. Mattel Inc. v. Brainy Baby Co., 2011 TTAB LEXIS 400 (TTAB 2011).

Flag, Coat of Arms, or Other Insignia of U.S., State, Municipality, or Foreign Nation

This is another claim where a party essentially just has to allege facts supporting the statutory language, namely, that the mark consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation.

No Commercial Presence in Country Underlying Foreign Registration | 15 U.S.C. § 1126(e)

In order to state this claim, a party must allege that the applicant of an application based on § 44(e) does not have a bona fide and effective industrial or commercial establishment, is not domiciled in, and not a national of the country of the registration supporting its § 44(e) basis. Kallamni v. Khan, 2012 TTAB LEXIS 37 (TTAB 2012).

Invalid Assignment of an Intent-to-Use Trademark Application | 15 U.S.C. § 1060

In order to state a claim for an invalid assignment of an intent-to-use application, a party must allege that, prior to filing a statement of use, the intent-to-use application was assigned to a third party who was not a successor to the business of the applicant, or a portion thereof, to which the mark pertained or that there was no business ongoing and existing at the time of the assignment. Central Garden & Pet Co. v. Doskocil Manufacturing Co., 108 USPQ2d 1134 (TTAB 2013).

Get a Copy of the Checklist

You basically have the checklist already since this blog post lays out the list of TTAB causes of action. But if you'd like a nice handy pdf with checkboxes just waiting to be checked off, click on the button below to get the checklist. If it comes to my attention that any causes of action are missing, I'll be updating both this post and the checklist. Another good reason to get the checklist is that it will automatically add you to the Trademark Well email newsletter. And if you're subscribed to the Trademark Well email newsletter, you'll receive an email notifying you of any updates to the list with the updated checklist so you don't have to re-download it.

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