Trademark Cancellation Claim Dismissed, Claimant Failed to Show “Genuine Adversity”
According to a report from Bloomberg Law, a federal appeals court has ruled that a trademark cancellation petition was properly dismissed by the Trademark Trial and Appeal Board (TTAB). Among other things, the court ruled that the plaintiff failed to show “genuine adversity.” Here, our South Florida trademark cancellation attorney provides an overview of the case and explains the importance of asserting genuine adversity in a trademark cancellation claim.
Background: What is Trademark Cancellation?
Trademark cancellation is a legal process where a party seeks to effectively terminate the registration of a trademark owned by another party. It can be part of a dispute resolution process where one party believes the registered mark is either currently invalid or should not have been registered in the first place. Some common reasons for trademark cancellation include:
- Non-use;
- Genericness;
- Abandonment; and
- Likelihood of confusion.
The Trademark Trial and Appeal Board (TTAB) oversees this adversarial process in the United States. Both parties present evidence and arguments. From there, the TTAB determines whether the registration should be canceled. Notably, the decision in a trademark cancellation dispute made by the TTAB can be appealed to a federal court.
Appellate Court Decision: Company Failed to Show Genuine Adversity
In September of 2020, George & Company LLC—a gaming company—filed a trademark cancellation petition against Spin Master Corp. After evaluating the matter, the TTAB declined to cancel the trademark. The United States Court of Appeals for the Second Circuit determined that the trademark cancellation petition was properly dismissed. The appellate court determined that the plaintiff (George & Company LLC) lacked jurisdiction to support the trademark cancellation. A key reason why was that the gaming company failed to show genuine adversity.
An Overview of “Genuine Adversity” and Trademark Cancellation Proceedings
In the context of trademark cancellation proceedings, the term “genuine adversity” refers to the real and legitimate opposition by a party to another’s registered trademark. Remember, these proceedings are initiated to cancel a registered trademark based on various grounds such as likelihood of confusion, genericness, or fraud in the registration process. You do not have standing to file a cancellation petition for every trademark.
To qualify, the petitioner must demonstrate a valid interest in the matter. In other words, they have a foundational responsibility to prove that they would, in some way, be harmed by the registration of the mark. In this case, both the TTAB and the federal appellate court determined that George & Company LLC failed to show any genuine adversity. As such, the trademark cancellation petition was dismissed without any evaluation of the merits of the Spin Master Corp. trademark.
Set Up a Confidential Consultation with Our Florida Trademark Cancellation Attorney Today
At Perkins Law, our Florida trademark cancellation attorney is a skilled and experienced advocate for clients. If you have any specific questions about a trademark cancellation, we are more than ready to protect your rights. Get in touch with us by phone or send us a message to arrange a fully confidential, no obligation initial call to discuss your case.
Source:
news.bloomberglaw.com/litigation/trademark-cancellation-request-doesnt-provide-jurisdiction
