Part of the enforcement efforts that trademark holders carry out on a routine basis comes in the form of opposition proceedings initiated with the U.S. Patent and Trademark Office (“USPTO”)’s Trademark Trial and Appeal Board (“TTAB”). In furtherance of such a proceeding, a trademark holder can formally request that another party’s application for registration be refused, most commonly on the basis of likelihood of confusion with a prior registered or used mark, dilution of a famous mark, descriptiveness, etc. At the same time, the TTAB also decides petitions for cancellation of existing trademark registrations – which are often lodged on many of the same bases as oppositions – and handles appeals involving applications to register marks and from expungement or reexamination proceedings.
With the foregoing in mind, we have compiled a list of some of the most relevant – or otherwise interesting – TTAB proceedings for retail/fashion brands that have been initiated over the past couple of months and will publish a new list each month complete with additional proceedings of note and/or updates to pending oppositions, cancellations and/or bids for reconsideration.
MSCHF v. CKL Holdings – BOING
In the first of two new proceedings, MSCHF is looking to get the TTAB to cancel CKL HOLDINGS N.V.’s trademark registration for BOING for use on apparel and footwear (Class 25), as well as lace, embroidery, ribbons, and ornamental pins, among other goods in Class 26. “In anticipation of another art project” of its own, MSCHF states in its April 5 petition for cancellation (No. 92082011) that it filed an application with the USPTO in July 2022 to register a stylized version of the words BOING BOING for use on “food for infants,” “shoes,” and basketballs; pumps for inflating sports equipment, namely, basketball shoes.”
The Brooklyn-based art collective initiated the cancellation after receiving an Office action in January, in which a USPTO examiner refused to register the mark, citing a likelihood of confusion with CKL’s BOING registration. The basis for MSCHF’s cancellation bid: The company behind the Satan sneakers, Big red Boots, and the (allegedly infringing) Wavy Babys claims that CKL “routinely registers for and obtains trademarks without actually using them” in furtherance of a scheme of “global international trademark fraud.” Much like other marks that it has amassed registrations for (often based on a foreign application and a statement of intent to use the mark in the U.S.), MSCHF claims that based on its research, CKL has “[n]ever used the BOING mark in commerce in the U.S. on any goods or services.”
In light of CKL’s “lack of bona fide intent to use the [BOING] mark” and given that over the past three years, it has discontinued any use that it may have previously made of the mark, MSCHF argues that CKL has abandoned the mark, and thus, its registration should be cancelled. Additionally, MSCHF asserts that the registration should be invalidated as a result of the “material misrepresentations” that CKL made to the USPTO about its intent to use the trademark, which amounts to fraud.
MSCHF v. In Good Company Brands – SUPER NORMAL
In a separate cancellation (No. 92081948) that it filed on March 28, MSCHF wants the TTAB to cancel In Good Company Brands’ registration for SUPER NORMAL for use on apparel and thereby, make way for the registration of its own use of the same mark on footwear that it first offered up last year. (The USPTO examiner preliminarily refused to register MSCHF’s SUPER NORMAL mark, citing likelihood of confusion with In Good Company’s already-registered mark. According to MSCHF, cancellation is warranted here because In Good Company filed for (and received) its registration without ever using the mark in connection with the claimed goods, namely by using an improper specimen with its application, which consisted of a “beta” webpage.
Because the site – and thus, In Good Company’s products – was not viewable to the public and instead, amounted to “a preview image from a beta webpage,” the specimen “does not show the SUPER NORMAL mark being actually used in commerce,” per MSCHF, namely, because it “does not give the public the opportunity to purchase anything.” Moreover, MSCHF asserts that it has been “unable to locate any use of the SUPER NORMAL by In Good Company on any of the goods, let alone continuous use on the goods since 2020.”
With this in mind, MSCHF requests that the TTAB cancel In Good Company’s registration.
Vans, Inc. – WAYVEE
After the USPTO issued a final refusal to register WAYVEE for use on footwear due to a likelihood of confusion with a previously registered mark – WAY.VEE for use on “men’s clothing and fashion accessories” – in December 2022, Vans appealed to the TTAB and lodged a request for reconsideration. In its March 15 request for reconsideration, Vans argued that “the overall differences between the parties’ marks, including the relative weakness of the [WAY.VEE mark], compels the conclusion that consumer confusion between the marks is extremely unlikely.” Unpersuaded, the USPTO denied the request on the basis that Vans’ “arguments that the marks are visually dissimilar and conceptually weak such that confusion is unlikely” do not raise a new issue, resolve all the outstanding issues, or provide any new or compelling evidence with regard to the outstanding issues.
Specifically, the USPTO found that Vans’ mark “could not coexist with the registered [WAY.VEE] mark without causing confusion,” with the “visual and auditory similarity between the applied-for and registered marks outweigh[ing] the other considerations and giv[ing] rise to the conclusion that confusion is likely.” The USPTO also asserted that, despite Vans’ argument to the contrary, the inclusion of the period in the registered mark is not sufficient to distinguish it from Vans’ mark.
Following the USPTO’s refusal on April 6, the appeal (No. 97040210) before the TTAB was resumed, and Vans has until June 10 to file its brief.
UPDATED (Apr. 18, 2023): Vans, Inc. alerted the TTAB that it has expressly abandoned U.S. Ser. No. 97040210 without prejudice.
Brooks Sports v. Puma – NITRO
Amid an ongoing the trademark and design patent lawsuit, which Puma filed against Brooks in July 2022 for allegedly infringing its NITRO trademark (and one of its design patents), Brooks has filed a notice of opposition (No. 91284233), arguing that it will be damaged by, and opposes registration for, Puma’s NITRO mark. In its March 17 opposition with the TTAB, Brooks asserts that, among other things, the “the challenged trademark consists only and entirely of the term ‘NITRO’ … the dictionary definition of [which] is ‘nitrogen.’’ Since Puma’s goods “as advertised on [its] website are footwear with nitrogen-infused foam soles,” the NITRO mark is “generic and merely describes the nitro-infused foam soles offered by [Puma].”
Beyond that, Brooks alleges that registration of the NITRO mark in connection with Puma’s goods “would provide [Puma] with a prima facie exclusive right to use the [NITRO] mark, and such registration would be the source of irreparable damage and injury to [Brooks].” Brooks states that the Puma’s trademark already “interferes with [its] current or planned business and marketing efforts because, inter alia, Brooks uses the term NITRO and various ‘nitro-infuse designations’” – including “nitro,” “nitrogen,” “nitro-infused”, “nitro-infuse,” and “nitrogen injected” – to “describe its shoes with nitro-infused midsoles in advertising and marketing its products.”
Still yet, setting out an “alternative claim of priority,” Brooks claims that its rights in the “nitro-infuse designations “actually predate Puma’s “adoption of, use, and application for, the challenged mark, and asserts that “to the extent that [Puma’s] challenged mark and [its] nitro-infuse designations are not descriptive or generic, due to the similarity between the challenged mark and nitro-infuse designations and the identical goods offered therewith, members of the public would likely believe that [Puma’s] goods bearing the challenged mark are sponsored by, affiliated with, or emanate from [Brooks].”