IP UPDATE
Exploring the latest in intellectual property law
IP UPDATE
Exploring the latest in intellectual property law
Results for "Trademark appeal"
Subscribe to Results for "Trademark appeal"'s Posts

Compelling Clarity: PTO Director Explains Compelling Merits Test

by | Mar 9, 2023 |

US Patent & Trademark Office (PTO) Director Katherine K. Vidal issued a precedential opinion clarifying the standard under which the Patent Trial & Appeal Board (Board) can institute on an inter partes review (IPR) petition despite the Fintiv factors militating toward denial. CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242 (PTO Feb. 27, 2023) (Vidal, Dir.) (precedential).

This opinion follows the Director’s Interim Procedure for Discretionary Denials memorandum (Guidance Memo) and her opinion in OpenSky Indus. v. VLSI Tech. In the guidance memo, the Director explained that when there is “compelling evidence of unpatentability,” the Board may decline to exercise its discretion to deny IPR institution.

In this case, Dali Wireless sued CommScope in the district court, alleging infringement of its patent. CommScope filed a petition to institute an IPR proceeding against the asserted patent. The Board granted the petition and instituted an IPR proceeding while the district court litigation was ongoing.

In granting the petition, the Board acknowledged that it would normally perform a Fintiv analysis to determine whether it should deny the petition in light of the parallel district court proceeding. However, considering the Guidance Memo and the “compelling invalidity challenge” presented by the petitioner, the Board skipped the Fintiv analysis and instituted on the petition. The Director instituted sua sponte review.

Recognizing some ambiguity in both OpenSky and the guidance memo, the Director made her decision precedential to clarify:

My Guidance Memo states that “the PTAB will not deny institution based on Fintiv if there is compelling evidence of unpatentability.” Although I now recognize that this instruction could be read to allow for a compelling merits determination as a substitute for a Fintiv analysis, that was not my intent. By that instruction, I intended for PTAB panels to only consider compelling merits if they first determined that Fintiv factors 1–5 favored a discretionary denial . . . . In circumstances where . . . the Board’s analysis of Fintiv factors 1–5 favors denial of institution; the Board shall then assess compelling merits. In doing so, the Board must provide reasoning sufficient to allow the parties to challenge that finding and sufficient to allow for review of the Board’s decision.

A determination of whether the petition presents a compelling merits case for invalidity requires a merits case that meets a higher standard than the “reasonable likelihood” test required by 35 U.S.C. § 314(a).

The Director found that the Board’s decision was deficient in both parts of the analysis. The Board did not perform any analysis of the Fintiv factors but instead went straight to a determination of whether the petition presented a compelling invalidity challenge. In connection with that determination, the Board failed to provide any reasoning that explained why it found the merits case presented in the petition compelling.

Finding that the Board’s reasoning was conclusory, the Director vacated the Board’s decision to institute IPR review and remanded for further proceedings consistent with her decision.

Practice Note: Less [...]

Continue Reading



read more

Little Weight Given to Conclusory Expert Declaration That Repeats IPR Petition Verbatim

by | Mar 2, 2023 |

The US Patent & Trademark Office Director affirmed and designated as precedential a Patent Trial & Appeal Board (Board) decision denying institution of an inter partes review (IPR) petition where the expert declaration presented conclusory assertions without underlying factual support and repeated verbatim the petitioner’s argument. Xerox Corp. v. Bytemark, Inc., IPR2022-00624 (PTAB Aug. 24, 2022) (Wood, Grossman, Tartal, APJs); Xerox Corp. v. Bytemark, Inc., IPR2022-00624 (Feb 10, 2023) (Vidal, Dir.)

Bytemark owns a patent directed to a method and system for distributing electronic tickets. According to the patent, a user can procure and store an electronic ticket on a device such as a mobile phone, and when the user presents the ticket, the ticket taker can verify the ticket by inspecting a visual object that a human can perceive without a machine scan. In addition to using a validating visual object, the patent teaches data integrity checking to ensure that the ticket data and the software managing that ticket data on the user’s device has not been altered improperly. As to the data integrity concept, the claims of the patent recite a server that is configured to “store in a data record associated with the user account a data value indicating the fraudulent activity” (fraud limitation).

Xerox filed an IPR petition challenging certain claims of the patent as obvious over the Terrell prior art reference in combination with various secondary references. Xerox argued that Terrell disclosed that after fraudulent activity is detected, “the purchaser of the ticket could be blocked from further use of the system or pursued in respect of their potential fraud.” Xerox asserted that a skilled artisan would understand that such blocking would require recording the blocking in a data record associated with that user’s account, and would find it obvious that blocking the account of the purchaser from further use of the system would include storing a data value indicating the fraudulent activity in a data record associated with the user account.

Bytemark responded that Terrell, at most, taught blocking a ticket purchaser from further use of the Terrell system based on potential fraud, but nowhere indicated that this would be achieved by using a data value indicating fraudulent activity, as opposed to some other manner of blocking a user, such as deleting the user’s account or reporting the user for fraud. Bytemark further argued that Xerox’s argument that a skilled artisan would find the fraud limitation obvious was conclusory and an improper attempt to use a skilled artisan’s common knowledge to supply a wholly missing claim limitation without evidentiary support.

The Board agreed with Bytemark, finding that Xerox did not provide sufficient evidence or persuasive reasoning to support either of Xerox’s arguments. The Board explained that Terrell taught blocking the purchaser rather than the account of the purchaser and that it was far from clear that blocking the purchaser would “require” recording the blocking in a record in the purchaser’s account, as opposed to deleting the purchaser’s account altogether. The Board noted that the [...]

Continue Reading



read more

PTO Seeks Comments on Role of Artificial Intelligence in Inventorship

by | Mar 2, 2023 |

The US Patent & Trademark Office (PTO) published a Request for Comments Regarding Artificial Intelligence and Inventorship seeking input from stakeholders on inventorship issues that may arise as artificial intelligence (AI) and emerging technologies play a greater role in the innovation process. The deadline to submit comments is May 15, 2023.

As background, the PTO held its inaugural AI and Emerging Technologies Partnership meeting, during which panelists discussed AI’s increasing role in innovation, in June 2022. Although there appeared to be consensus that AI cannot “conceive” of inventions, some panelists contended that AI is merely a tool like any other tool used in the inventive process, while others pointed to situations in which AI systems can output patentable inventions or contribute at the level of a joint inventor. While the PTO has been exploring the contours of inventorship law with respect to AI-generated inventions, in August 2022, the US Court of Appeals for the Federal Circuit issued its decision in Thaler v. Vidal, finding that inventorship is limited to natural persons. The Court explained, however, that it was not confronted with “the question of whether inventions made by human beings with the assistance of AI are eligible for patent protection.”

Recognizing the uncertainty surrounding the role of AI inventorship in the wake of the Thaler decision, the PTO seeks public comment on several questions, including the following:

1. How is AI, including machine learning, currently being used in the invention creation process?

2. How does the use of an AI system in the invention creation process differ from the use of other technical tools?

3. If an AI system contributes to an invention at the same level as a human who would be considered a joint inventor, is the invention patentable under current patent laws?

4. Do inventions in which an AI system contributed at the same level as a joint inventor raise any significant ownership issues?

5. Is there a need for the PTO to expand its current guidance on inventorship to address situations in which AI significantly contributes to an invention? How should the significance of a contribution be assessed?

6. Should the PTO require applicants to provide an explanation of contributions AI systems made to inventions claimed in patent applications? If so, how should that be implemented, and what level of contributions should be disclosed? Should contributions to inventions made by AI systems be treated differently from contributions made by other (e., non-AI) computer systems?

7. What additional steps, if any, should the PTO take to further incentivize AI-enabled innovation (e.g., innovation in which machine learning or other computational techniques play a significant role in the invention creation process)?

8. What statutory changes, if any, should be considered as to US inventorship law, and what consequences do you foresee for those statutory changes?



read more

Message Received: US Courts Are Appropriate, More Convenient Venue to Adjudicate US IP Disputes

by | Feb 23, 2023 | , ,

Addressing personal jurisdiction and forum non conveniens in a software licensing dispute, the US Court of Appeals for the Fourth Circuit upheld a district court’s exercise of personal jurisdiction over a Dutch entity and the court’s decision to not dismiss the case for forum non conveniens. dmarcian, Inc. v. dmarcian Europe BV, Case Nos. 21-1721; -2005 (4th Cir. Feb. 14, 2023) (Wilkinson, Heytens, Hudson, JJ.)

dmarcian is a North Carolina-based software company that developed software to help email users authenticate incoming emails. A Dutch businessman who owned Mailmerk contacted dmarcian to offer to market the software in Europe. While dmarcian was initially unreceptive to the offer, the two parties eventually reached an oral agreement for Mailmerk to rebrand as dmarcian Europe BV (dmarcian BV) and sell the dmarcian software in Europe and Africa.

A dispute arose when dmarcian BV claimed ownership of portions of the dmarcian source code. dmarcian BV filed suit in the Netherlands, eventually filing for and winning injunctive relief in the Netherlands when dmarcian terminated dmarcian BV’s license. dmarcian then filed suit in the Western District of North Carolina asking for a preliminary injunction against dmarcian BV, which dmarcian BV opposed with a motion to dismiss for forum non conveniens. The district court denied the motion to dismiss and entered a preliminary injunction that precluded dmarcian BV from operating outside of Europe and Africa and required dmarcian BV to stop using the registered “dmarcian” trademark without a disclaimer. The district court later found dmarcian BV in contempt for violating the preliminary injunction and ordered dmarcian BV to pay $335,000 in sanctions. dmarcian BV appealed the injunction and the sanctions.

dmarcian BV argued that the district court did not have personal jurisdiction. The Fourth Circuit rejected that argument, finding that the North Carolina long-arm statute authorized jurisdiction over dmarcian BV. The Court found that the application of the long-arm statute to dmarcian BV complied with due process because dmarcian BV worked closely with the dmarcian team in North Carolina (e.g., receiving sales leads, attending virtual meetings, coordinating software development), dmarcian BV sought out dmarcian to initiate business, and there was a strong interest in protecting intellectual property rights in North Carolina.

The Fourth Circuit also upheld the denial of the dismissal for forum non conveniens because the Dutch court was not an adequate alternative forum since Dutch courts cannot effectively adjudicate US trademark claims. The Fourth Circuit found that any judgment by the Dutch court would have little effect in the United States and would deny relief to dmarcian for the infringement of its rights.

The Fourth Circuit upheld the preliminary injunction grant, finding that the district court properly applied US and North Carolina law extraterritorially and that dmarcian was likely to succeed on all claims. The Court found that US laws properly applied and that dmarcian was likely to succeed on the following claims:

  • Copyright infringement, because there was a registered copyright, dmarcian BV reproduced elements of the source code outside of the licensing agreement, and [...]

    Continue Reading


read more

Review Delayed Is Not Review Denied

by | Feb 16, 2023 | ,

Considering whether the US Patent & Trademark Office (PTO) Director must complete review of the Patent Trial & Appeal Board’s (Board) inter partes review (IPR) decision within the statutory deadline for a final written decision, the US Court of Appeals for the Federal Circuit concluded that the statute imposes no such requirement. CyWee Group Ltd. v. Google LLC et al., Case Nos. 20-1565, -1567 (Fed. Cir. Feb. 8, 2023) (Prost, Taranto, Chen, JJ.).

In 2018, Google filed two IPR petitions challenging certain claims of CyWee’s patents. The Board issued its final written decisions in January 2020, determining that all challenged claims were unpatentable for obviousness. CyWee appealed to the Federal Circuit in March 2020. In addition to challenging the patentability decision, CyWee challenged the appointment of Board administrative patent judges (APJs) as unconstitutional in view of the Appointments Clause. In March 2021, the Court affirmed the Board’s decisions and rejected CyWee’s constitutional challenge. The Court issued its mandate on June 10, 2020.

Eleven days later, the Supreme Court of the United States issued its decision in United States v. Arthrex, Inc., holding that APJs’ power to render final patentability decisions unreviewable by an accountable principal officer gave rise to an Appointments Clause violation but this violation could be remedied by, among other things, remanding to the acting PTO Director to decide to rehear the case. In response to a request from CyWee, the Federal Circuit recalled the mandate and remanded “for the limited purpose of allowing CyWee the opportunity to request Director rehearing of the final written decisions,” and required CyWee to inform the Court within 14 days of any decision denying rehearing. On remand, the Commissioner for Patents denied rehearing and ordered that the already-issued final written decisions were final decisions of the PTO. CyWee appealed.

CyWee contended that the post-Arthrex, mandated review by the PTO Director was untimely—and thus violative of due process—because the PTO Director did not have the ability to review the institution decision and final written decision within their respective three-month and one-year statutory deadlines. The Federal Circuit disagreed, calling CyWee’s contentions “meritless.” Rather, the Court found that because the PTO Director had permissibly delegated to the Commissioner for Patents authority to render institution and final decisions to the Board, those decisions were timely so long as the PTO Director’s delegees rendered them within the statutorily prescribed periods. By contrast, the PTO Director’s final review authority—a constitutional necessity born from Arthrex—has no similar statutory deadline.

CyWee also argued that the PTO Director’s later review was too late to satisfy a general requirement that the PTO Director consider the effect of regulations on the PTO’s ability to timely complete instituted IPRs. The Federal Circuit rejected this argument too, finding that even if the statute imposed a general timeliness requirement that was subject to judicial review, nothing about the process afforded to CyWee would have violated such a requirement.

With a different spin on the timeliness issue, CyWee also argued that the Board’s extension [...]

Continue Reading



read more

Took a DNA Test, Turns Out “100% THAT BITCH” Is 100% Registrable

by | Feb 16, 2023 |

Addressing a refusal to register for failure to function as a trademark, the Trademark Trial & Appeal Board (Board) reversed, finding that the evidence of consumer perception of “100% THAT BITCH” did not demonstrate that the proposed mark is such a widespread and common expression that it failed to function as a source identifier. In re Lizzo LLC, Serial Nos. 88466264, 88466281 (TTAB Feb. 2, 2023) (Cataldo, Pologeorgis, Coggins, ATJ).

World-renowned, Grammy-winning artist Lizzo, through her company, Lizzo LLC, filed two applications to register 100% THAT BITCH for use in connection with clothing and related goods in International Class 25. The mark is a reference to a lyric (“I just took a DNA test, turns out I’m 100% that bitch”) from her chart-topping hit, “Truth Hurts.” The US Patent & Trademark Office (PTO) issued an office action refusing to register the mark based on failure to function as a trademark under Sections 1, 2 and 45 of the Trademark Act. Specifically, the examining attorney asserted that the phrase is a “commonplace expression widely used by a variety of sources to convey an ordinary, familiar, well-recognized sentiment.” The PTO denied the request for reconsideration, and Lizzo appealed.

In assessing a refusal to register for failure to function as a trademark, the Board must look to consumer perception of the mark; specifically, whether the mark serves merely an ornamental or informational purpose rather than a source-identifying one. In this case, the relevant consumer consists of the general public, as there were no limitations on the channels of trade or classes of consumers identified in the applications. The examining attorney argued that the evidence demonstrated only that the mark, as used on the relevant goods, portrayed “a message of self-confidence and female empowerment used by many different entities in a variety of settings”—a message that Lizzo “did not originate[,] . . . but merely popularized.”

The Board discounted much of the evidence proffered to show that the mark was ornamental as it largely all referred to Lizzo, her music and/or her song, “Truth Hurts,” demonstrating that “consumers encountering 100% THAT BITCH on the specific types of clothing identified in the application—even when offered by third parties—associate the term with Lizzo and her music.” The Board further noted that all of the evidence regarding third-party use corresponded with the release of Lizzo’s “Truth Hurts”—a correlation that suggests the term was not widely known or used until Lizzo popularized it.

Although there was no disagreement that the proposed mark conveys a “feeling of female strength, empowerment and independence,” the Board found that the record supported that “most consumers would perceive 100% THAT BITCH used on goods in the application as associated with Lizzo rather than as a commonplace expression.” Accordingly, the Board reversed the refusal to register.



read more

Ninth Circuit Extends § 230 Immunity to Domain Name Registrars

by | Feb 16, 2023 |

The US Court of Appeals for the Ninth Circuit affirmed a district court’s dismissal of the plaintiff’s suit against a domain name registrar, holding that the plaintiff did not adequately allege that the registrar used the disputed trademark “in commerce” as required by the Lanham Act. The Court also extended immunity under the Communications Decency Act to include domain name registrars. Rigsby v. GoDaddy Inc. et al., Case No. 21-16182 (9th Cir. Feb. 3, 2023) (Clifton, McKeown, Thomas, JJ.).

Scott Rigsby, the first double leg amputee to complete an IRONMAN triathlon and founder of the Scott Rigsby Foundation (a nonprofit for wounded veterans and disabled persons), registered the domain name “scottrigsbyfoundation.org” with GoDaddy.com in 2007. GoDaddy is the world’s largest domain name registrar. When Rigsby failed to renew the domain name in 2018 because of a billing glitch, a third party registered the domain name and changed the content to an online gambling site. Rigsby filed suit against GoDaddy in the US District Court for the Northern District of Georgia, seeking declaratory judgment and alleging Lanham Act and state law claims. The suit was transferred to the US District Court for the District of Arizona pursuant to the forum selection clause in GoDaddy’s terms of service. The district court dismissed all claims with prejudice. Rigsby appealed, challenging dismissal and transfer of venue.

The Ninth Circuit affirmed dismissal. As an initial matter, the Court determined that it lacked jurisdiction to review the transfer order because the transferor fell within the Eleventh Circuit.

Turning to the Lanham Act claims under 15 U.S.C. § 1125(a), Rigsby alleged that GoDaddy knowingly provided use of the domain name in a deceptive manner. The Ninth Circuit rejected this argument for two reasons. First, § 1125(a) has a use in commerce requirement, and GoDaddy simply granted the third-party gambling site access to the domain name. The Court held that the third party’s use in commerce does not subject the registrar to liability for trademark infringement or unfair competition. Second, as a domain name registrar that did not engage in activities other than registration, GoDaddy is shielded from liability for cybersquatting under the Anticybersquatting Consumer Protection Act (ACPA). Importantly, the Court held that the plaintiff did not prove that GoDaddy registered, used or trafficked the domain name with a bad-faith intent to profit—a registrar’s lack of intervention with an infringing third-party use is not equivalent to use in commerce or active promotion of infringement.

The Ninth Circuit also barred Rigsby’s state law claims and related injunctive relief, explaining that GoDaddy is entitled to statutory immunity under Section 230 of the Communications Decency Act (CDA). (See § 230(c)(1) (“[n]o provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider”).) The Court identified three reasons why GoDaddy qualifies for CDA immunity. First, the Ninth Circuit joined the Second Circuit in ruling that domain name registrars and website hosting companies qualify as interactive computer services because [...]

Continue Reading



read more

It’s PRUdent to Refrain from Cybersquatting: ACPA Applies to Domain Name Re-Registration

by | Feb 9, 2023 | ,

The US Court of Appeals for the Fourth Circuit joined the Third and Eleventh Circuits in ruling that the re-registration of an infringing domain name with a bad faith intent to profit violates the Anti-Cybersquatting Consumer Protection Act (ACPA). Prudential Ins. Co. of Am. v. Shenzhen Stone Network Info. Ltd., Case No. 21-1823 (4th Cir. Jan. 24, 2023) (Diaz, Thacker, Floyd, JJ.)

The ACPA, 15 U.S.C. § 1125(d), protects trademark owners from cybersquatters that register, traffic in, or use a domain name “identical or confusingly similar to or dilutive of” a distinctive or famous mark with the “bad faith intent to profit.” The ACPA jurisdictional requirement states that a trademark owner may either establish that a court has in personam jurisdiction over the defendant or, if personal jurisdiction cannot be established, bring an in rem action against the domain name.

Prudential Insurance Company of America’s trademark portfolio includes the term PRU and other PRU-formative marks. Shenzhen Stone Network Information (SSN) acquired the domain name PRU.COM from an online domain name marketplace, which leads to a parked page containing advertisements displaying Prudential’s trademarks and the marks of Prudential’s competitors. Prudential attempted to acquire the PRU.COM domain name twice—once through a domain name brokerage service and once after filing a Uniform Domain Name Dispute Resolution Policy (UDRP) administrative action with the World Intellectual Property Organization (WIPO). SSN rejected both offers. SSN claimed that it planned to develop the website into a foreign exchange and economic news platform, but it never substantively altered the parked page. Prudential subsequently dismissed the UDRP action and filed suit in the Eastern District of Virginia alleging cybersquatting and infringement against the CEO of SSN, Zhang (in personam), and PRU.COM (in rem). Zhang moved to dismiss the action or transfer it to the District of Arizona for lack of personal jurisdiction and in rem jurisdiction. The district court held that although it lacked personal jurisdiction over Zhang, in rem jurisdiction was appropriate at the time the complaint was filed. The district court then dismissed Prudential’s trademark infringement claim as moot, granted summary judgment to Prudential on its cybersquatting claim and ordered SSN to transfer the PRU.COM domain name. SSN timely appealed to the Fourth Circuit.

The Fourth Circuit, reviewing the district court ruling de novo, affirmed. As an initial matter, the Court held that the district court had proper in rem jurisdiction over the PRU.COM domain name because Zhang, as a corporate officer of SSN, lacked standing to defend SSN’s property interests and the domain name registry was located in Virginia. Moreover, in rem jurisdiction is assessed at the time the complaint is filed and cannot be destroyed during the pendency of the case if a proper defendant is later revealed.

Regarding the ACPA claim, SSN argued that since the initial domain name registrant registered PRU.COM in good faith, SSN, as a re-registrant, is not subject to the ACPA. The Fourth Circuit joined the Third and Eleventh Circuits in holding that the term “registration” in the ACPA is [...]

Continue Reading



read more

Actual Confusion Is the Best Evidence of Confusion

by | Feb 9, 2023 |

The US Court of Appeals for the Eighth Circuit reversed and vacated a district court’s preliminary injunction grant in a trademark dispute, concluding that potential confusion is insufficient to satisfy the burden of showing a substantial likelihood of confusion. H&R Block, Inc.; HRB Innovations, Inc. v. Block, Inc., Case Nos. 22-2075; -2023 (8th Cir. Jan. 24, 2023) (Gruender, Erickson, JJ.) (Melloy, J., dissenting).

H&R Block was founded in 1955 and specializes in income tax preparation and other tax and financial services. Over the years, H&R Block has invested billions of dollars in advertising campaigns and has developed significant market presence both in person and online. The company has also obtained several federal registrations directed to the use of a green square logo with its products and asserts that in addition to “H&R Block” it is known as just “Block.”

Square, Inc., is the company behind the Square payment card reader and point-of-sale software that allows individual sellers to accept credit card payments. Square was founded in 2009 and grew over time by acquiring or developing other businesses. Cash App is one of Square’s businesses. Cash App started in 2013 as Square Cash and is a purely digital platform that allows users to deposit and store money on the app. In November 2020, Square acquired free tax credit service Credit Karma Tax, which was rebranded as Cash App Taxes and integrated into the Cash App platform for the 2022 tax season. In December 2021, Square was renamed Block, Inc., and the name change was publicized via Twitter.

Fifteen days after the name change was announced, H&R Block filed suit alleging trademark infringement. Shortly thereafter, H&R Block moved for a preliminary injunction. The district court analyzed the marks at issue for likelihood of confusion and granted, in part, H&R Block’s request for a preliminary injunction. Block appealed.

The Eighth Circuit analyzed a list of six non-exclusive and non-exhaustive factors in assessing likelihood of confusion:

  1. The strength of the owner’s mark
  2. The similarity of the owner’s and the alleged infringer’s marks
  3. The degree to which the products compete with each other
  4. The alleged infringer’s intent to pass off its goods as those of the trademark owner
  5. Incidents of actual confusion
  6. The type of product, its cost and its conditions of purchase.

The Eighth Circuit agreed with the district court that H&R Block had demonstrated that its registered and common law marks were commercially strong but found that the record as a whole did not weigh in favor of H&R Block on the similarity factor because there were observable differences between the two logos and the competing products.

The Eighth Circuit indicated that ultimately the best evidence of likelihood of confusion is actual consumer confusion. While the record supported possible confusion by some consumers, the Court found that the district court had erred in finding actual consumer confusion and that H&R Block had not presented sufficient evidence to rise to the level of substantial confusion by an appreciable number of ordinary consumers. [...]

Continue Reading



read more

Deleting Goods from Registration Subject to Cancellation During Audit May Result in Adverse Judgment

by | Jan 26, 2023 |

The Trademark Trial & Appeal Board (Board) addressed, for the first time, whether the deletion of goods and services as a result of a post-registration audit during a cancellation proceeding triggers Trademark Rule 2.134 and found that it does. The Board required the respondent to show cause as to why its deletion of certain goods from the challenged registration should not result in an adverse judgment. Ruifei (Shenzhen) Smart Technology Co., Ltd. v. Shenzhen Chengyan Science and Technology Co., Ltd., Cancellation No. 92077931 (TTAB Jan. 12, 2023) (Lykos, Lynch, Larkin, ATJ)

Ruifei (Shenzhen) Smart Technology petitioned to cancel a trademark that was registered to Shenzhen Chengyan Science and Technology Co., Ltd. (Chengyan) based on abandonment and fraud. Ruifei thereafter filed a motion for leave to amend its pleadings and concurrently filed a motion for partial summary judgment. Finding that Chengyan did not contest the motion for leave to amend, the Board granted Ruifei’s motion and accepted the proposed amended petition to cancel. The summary judgment motion, however, was deferred, pending Chengyan’s response to the instant order.

After the cancellation proceeding was initiated, Chengyan filed a Section 8 Declaration of Use in connection with the contested registration and received a post-registration office action audit. In response to the audit, Chengyan deleted some of the goods from the contested registration’s identification.

Ruifei mentioned the amendment to the contested registration in its motion for partial summary judgment. The Board, having been made aware of the deletion of goods, held that the amendment raised new issues requiring Chengyan’s input before it could consider the motion for partial summary judgment.

Without the written consent of a petitioner, a respondent’s deletion of goods or services from a registration subject to a pending cancellation action typically would result in judgment against the respondent under Trademark Rule 2.134. The purpose of this rule is to prevent respondents in cancellation proceedings from avoiding judgment by cancelling certain goods or services to render the cancellation action moot.

Trademark Rule 2.134(b) provides respondents with the opportunity to explain why certain goods or services were cancelled under Section 8 to avoid judgment being entered against them:

After the commencement of a cancellation proceeding, if it comes to the attention of the . . . Board that the respondent has permitted its involved registration to be cancelled under section 8 . . . an order may be issued allowing respondent . . . to show cause why such cancellation . . . should not be deemed to be the equivalent of a cancellation by request of respondent without the consent of the adverse party and should not result in entry of judgment against respondent.

The Board had not previously considered a situation in which goods or services were deleted as a result of a post-registration audit but held that the “same concerns . . . and [] policies underlying Trademark Rule 2.134(b) apply.” Accordingly, the Board granted Chengyan 20 days to file a response showing why its deletion of certain goods should not [...]

Continue Reading



read more

BLOG EDITORS

Paul Devinsky

Amol Parikh

Jodi Benassi

STAY CONNECTED

Subscribe

TOPICS

ARCHIVES