Oppose, Cancel, or Make a Deal – Part 3 Consent and Concurrent Use Agreements

You sell GRINS brand candy bars. You want to register GRINS as a trademark but, whoops, another company already has a registration for GRINS for cookies.

You’re probably going to have to rebrand but, maybe not.

I look at getting my client a trademark registration in terms of developing a strategy and then using just the right tactics to accomplish my client’s goal.

Candy bars and cookies are similar enough that your application’s probably not going to get through the Trademark Office review but, you might be able to make a deal with the cookie company:

  • You agree to use GRINS only for candy. They agree to use GRINS only for baked goods.

You can also divide up the trademark rights in other ways. For example:

  • You agree to use GRINS only west of the Mississippi. They agree to use GRINS only east of the Mississippi.
  • You agree to always use GRINS CANDY. They agree to use only GRINS COOKIES.

Without some kind of leverage, the cookie company has no reason to make a deal with you. We might get some leverage if there was something not entirely above-board about their application. Sometimes the other company agrees to enter into an agreement in exchange for a payment.

Most of the time, there’s nothing anyone can do about another application or registration that’s in the way of the trademark you want to use but, every once in a while, there is a way forward.

Oppose, Cancel, or Make a Deal – Part 2 Cancellations

You’ve been selling GRINS brand candy bars. You want to register GRINS as a trademark but another company already has a registration for GRINS for candy

Usually, that’s it. Game over.

In Oppose, Cancel, or Make a Deal – Part 1, we looked at one way to move forward. This post looks at “cancellations.”

I think of getting a registration as a problem to solve with the tools I have at hand. Sometimes the tools are what I need. Sometimes they aren’t.

There are at least 27 different reasons[1] for a cancellation. The three I see most are: Prior Common Law Rights; Abandonment; and Fraud. If I have the tools for one of those three, I might be able to cancel the other registration so your application can move forward.

Prior Common Law Rights

  • You were using GRINS before the other company started using GRINS[2]; and
  • Your earlier use of GRINS was throughout the United States; and
  • The other company’s registration is less than 5 years-old.

Abandonment

  • The other company isn’t using GRINS anymore; and
  • The other company isn’t ever going to start using GRINS again.

Fraud

Faked specimen
Faked specimen

It’s hard to know if the owner committed fraud unless it’s obvious from the documents at the Trademark Office. Faked “specimens” are the easiest fraud to find. Here are two hilarious examples of fakes from the Trademark Office.

If you can’t oppose the application and you can’t cancel the registration, you can try to make a deal. We’ll cover that in Part 3.


[1] (1) Trademark Act § 2(d), 15 U.S.C. § 1052(d): That defendant’s mark so resembles a mark registered in the Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods or services of the defendant, to cause confusion, or to cause mistake, or to deceive.

(2) Trademark Act § 2(e), 15 U.S.C. § 1052(e): For example, that defendant’s mark, when used on or in connection with the goods or services of the defendant, is merely descriptive or deceptively misdescriptive of them, or that defendant’s mark is primarily geographically descriptive or primarily geographically deceptively misdescriptive of them; or that defendant’s mark is primarily merely a surname; or that defendant’s mark comprises any matter that, as a whole, is functional.

(3) Trademark Act § 2(a),15 U.S.C. § 1052(a): For example, that defendant’s mark is geographically deceptive, that defendant’s mark falsely suggests a connection with plaintiff’s name or identity or that defendant’s mark is 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 was first used on or in connection with wines or spirits by the applicant on or after January 1, 1996.

(4) That there was no bona fide use of defendant’s mark in commerce prior to the filing of the use-based application for its registration under Trademark Act § 1(a), 15 U.S.C. § 1051(a), or for a Trademark Act § 1(b), 15 U.S.C. § 1051(b) application, within the expiration of the time for filing a statement of use.

(5) That defendant did not have a bona fide intent to use the mark in connection with the identified goods/services as of the filing date of the application under Trademark Act § 1(b), 15 U.S.C. § 1051(b). A plaintiff need not allege and prove that the defendant acted in bad faith and intended to deceive the USPTO. The requirements for pleading and proving a lack of a bona fide intent to use a mark do not equate to the requirements for pleading and proving fraud.

(6) That defendant’s mark is a mere background design that does not function as a mark separate and apart from the words displayed thereon.

(7) That defendant is not (and was not, at the time of the filing of its application for registration) the rightful owner of the registered mark.

(8) That defendant’s mark, consisting of a particular color combination applied to its goods, is ornamental and has not become distinctive as an indication of the source of defendant’s goods.

(9) That defendant’s mark, consisting of a particular sound applied to its goods, is not inherently distinctive and has not acquired distinctiveness.

(10) That defendant’s mark, consisting of trade dress, product design or packaging, is not inherently distinctive and has not acquired distinctiveness.

(11) That the term for which registration is sought or for which registration has been obtained has not been used as a trademark or service mark.

(12) That defendant’s mark represents multiple marks in a single application (or registration) (“phantom mark”).

(13) That defendant’s mark has been abandoned due to nonuse with intent not to resume use, and nonuse for three consecutive years shall be prima facie evidence of abandonment; or due to a course of conduct that has caused the mark to lose significance as an indication of source.

(14) That defendant’s mark consists of or comprises the name of a particular living individual without the individual’s consent. Trademark Act § 2(c), 15 U.S.C. § 1052(c).

(15) That defendant’s product design is generic.

(16) That defendant’s mark would dilute the distinctive quality of plaintiff’s famous mark.

(17) That defendant has used its mark so as to misrepresent the source of its goods or services.

(18) That defendant has misused the federal registration symbol with intent to deceive the purchasing public or others in the trade into believing that the mark is registered.

(19) That defendant committed fraud in the procurement of its registration or during the prosecution of its application for registration.

(20) That defendant’s registered mark interferes with the registration of a foreign owner’s mark under Article 8 of the General Inter-American Convention for Trademark and Commercial Protection of Washington, 1929 (“Pan American Convention”), 46 Stat. 2907.

(21) That defendant’s application is barred from registration by claim or issue preclusion.

(22) That defendant’s mark is the title of a single creative work and not considered a trademark.

(23) Trademark Act § 2(b), 15 U.S.C. § 1052(b): Registration of a mark which is “the flag or coat of arms or other insignia of the United States, or of any State or municipality” is prohibited.

(24) That defendant has not established a commercial presence in the country from which its underlying foreign registration issued where such foreign registration forms the basis of the U.S. registration or application for registration. Trademark Act § 44(e); 15 U.S.C. § 1126(e).

(25) That the intent-to-use application was assigned or transferred in contravention of Trademark Act § 10; 15 U.S.C. § 1060.

(26) That the mark is generis. A mark registered on the Supplemental Register is subject to cancellation on the basis that it is generic.

(27) That the mark is not in lawful use in commerce where the provision of the identified goods and/or services is unlawful under federal law.

[2] Check out Oppose, Cancel, or Make a Deal Part 1 to see how to figure this out