[author: Olivera Medenica]
Many trademark owners delay the filing of their trademarks with the USPTO, only to find that once they are ready to file, someone has already done it. It is a frustrating process which only underscores the importance of early registration planning. Some may find solace in the knowledge that a trademark cancellation proceeding might be within their arsenal if they can demonstrate prior use. But perhaps they could find even greater comfort in the knowledge that use of a trademark - short of use in U.S. commerce - might be sufficient to support cancellation of a registered mark.
It is a well known fact that the completed registration of a mark is prima facie evidence that the mark is valid, that the registrant owns the mark, and that the registrant has the exclusive right to use the mark in commerce. Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192 F.3d 337, 345 (2d Cir. 1999). These rights, however, are not incontestable, see 15 U.S.C. § 1064, and, if challenged within five years of becoming effective, the registration may be canceled based on any ground "that would have prevented registration in the first place." Cunningham v. Laser Golf Corp., 222 F.3d 943, 945-46 (Fed. Cir. 2000); see also 15 U.S.C. § 1115(a).
One of the grounds upon which to seek cancellation is prior use. Typically, prior use is demonstrated by a showing that the senior user has made use of the mark -- in U.S. commerce -- prior to the junior user. What is important is that the senior user’s use of the mark precede the filing date of the junior user’s registration. This is because upon perfection of the registration, the earlier registration filing "constitute[s] constructive use of the mark, conferring a right of priority" as against all others except those who have used the mark "prior to such filing." 15 U.S.C. § 1057(c); see also De Beers LV Trademark Ltd. v. DeBeers Diamond Syndicate, Inc., 440 F. Supp. 2d 249, 266 (S.D.N.Y. 2006).
This prior use, however, does not necessarily need to amount to “use in U.S. commerce” but can be some form of lesser use that, although insufficient for a registration, is sufficient for purposes of cancellation. Such "use analogous to trademark use" is sufficient to stand in the stead of actual trademark use only if it is "of such a nature and extent that the mark has become popularized in the public mind so that the relevant segment of the public identifies the marked goods with the mark's adopter." Am. Express Co. v. Goetz, 515 F.3d 156, 161-62 (2d Cir. 2008) (internal quotation marks omitted); see also AB Electrolux v. Bermil Indus. Corp., 481 F. Supp. 2d 325, 330 (S.D.N.Y. 2007) (considering "use in advertising or other marketing materials [that] establish[es] the identification of the mark with the user and put[s] others on notice of the user's potential rights"); cf. Buti v. Impressa Perosa S.R.L., 139 F.3d 98, 104-05 (2d Cir. 1998) (holding that "the mere advertising or promotion of a mark in the United States is insufficient to constitute 'use' of the mark 'in commerce'"). Cases that have found use analogous to trademark use adequate to establish priority have generally involved an active attempt to target the relevant market, see, e.g., Diarama Trading Co. v. J. Walter Thompson U.S.A., Inc., No. 01 Civ. 2950, 2005 U.S. Dist. LEXIS 19496, at *22-25 (S.D.N.Y. Sept. 6, 2005) (plaintiff had placed its mark on its shipping packaging and been mentioned in numerous trade publications and print advertisements); Fabrique Cosmetique, Inc. v. Honeybee Gardens, Inc., Cancellation No. 92043570, 2007 TTAB LEXIS 111, at *18-20 (T.T.A.B. Mar. 8, 2007) (finding that "'[p]rominent use of a mark in pre-sales publicity directed at potential customers . . . suffice[s] to create a priority date'" when petitioner had advertised directly to potential resalers (quoting 2 McCarthy on Trademarks and Unfair Competition § 16:12 (4th ed. 2006))), but even such purposeful marketing may be insufficient if not of significant breadth and penetration. See, e.g., Int'l Healthcare Exch., Inc. v. Global Healthcare Exch., LLC, 470 F. Supp. 2d 365, 371-72 (S.D.N.Y. 2007) (finding presentations, seminars, lectures, mention in an industry periodical, and holiday cards sent to relevant consumers insufficient to establish analogous use).
So to all trademark owners who have procrastinated the filing process, don’t despair – if you can show significant prior use that demonstrates proactive targeting of potential consumers, or recognition in trade publication or the media in general (within U.S. borders), you might be in luck and may be able to successfully cancel a registered mark.
If you have any questions regarding cancellation of a registered mark, contact Olivera Medenica at Omedenica@wrlawfirm.com.