Have you tried to register a trademark or contemplated filing a trademark application with the U.S. Patent and Trademark Office only to find that someone else has already registered an identical or similar trademark? This is a common problem for people in the United States, where trademark rights are generally provided to whoever was first to use a trademark in commerce as opposed to being first to file an application.
If you find yourself in such a situation, then feel free to contact us about your particular issue. We keep all communications confidential, pride ourselves on quick and active responses, and do not charge for initial consultations.
Just because someone else possesses a trademark registration for a mark that is likely to be confused with your brand does not mean that it is necessarily the end of the road and all hope is lost. Before you give up and rebrand, consider the potential of filing what is called a petition for cancellation. The initial filing must be made with the Trademark Trial and Appeal Board (TTAB) and establish that you (1) have standing to petition for cancellation; and (2) have a meritorious claim for cancellation.
Under the Trademark Act, a petition for cancellation must be filed within five years from the date of registration of a trademark on the principal register or at any time if the mark that is registered is found on the supplemental register. As of this date, the fee for filing a petition to cancel online is $600 per class of goods and services associated with the registered trademark and which the petitioner seeks to have canceled.
There are a few different claims that a petitioner can make in an effort to cancel an existing trademark registration. The foundation must be laid in accordance with 15 U.S. Code § 1064 and a precondition is that the petitioner believes that he is or will be damaged based on a likelihood of dilution or otherwise, by the continued registration of the mark.
Here are a few grounds that can be laid to challenge an existing trademark registration:
- If the trademark becomes the generic name for the goods and services, or a portion thereof, for which it is registered;
- If the trademark becomes functional for the goods and services, or a portion thereof, for which it is registered;
- If the trademark has been abandoned by its owner;
- If the trademark was obtained fraudulently; and
- If the trademark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used.
An example of a petitioner seeking to cancel trademark registrations based on a claim that the trademark has become generic is playing out between Peloton and Mad Dogg Athletics. Peloton has taken the position that Mad Dogg Athletics’ ownership of registrations for the trademarks “SPIN” and “SPINNING” is improper, as the terms have clearly become generic in the relevant marketplace where people are exercising on stationary bicycles. Peloton has complained that Mad Dogg Athletics attempts to abusively enforce its registrations, which should be canceled.
Mad Dogg Athletics began using the “SPIN” and “SPINNING” trademarks in commerce in the 1990s. Since then, the terms have become commonly used in the indoor cycling industry, and Peloton has made reference in its petitions for cancellation to articles written by publications such as The Wall Street Journal, The New York Times, and The Washington Post where the registered marks have been used in an effort to demonstrate just how generic they have become.
Under 15 U.S. Code § 1064, “the primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.”
Peloton is seeking to have Mad Dogg Athletics’ trademark registrations canceled on that specific ground, and really as a result of Mad Dogg Athletics’ overly aggressive prior posture in sending numerous cease and desist letters demanding that third parties stop using its registered marks. One such letter, directed at Peloton, intended to cause Peloton to take down a video on YouTube that made reference to its users as “Mocha Spin Docs.”
The Peloton petitions will be interesting to follow for trademark practitioners and others who may be contemplating filing their own petitions for cancellation.