Category Archives: Cancellations

Divided TTAB Panel Cancels Six REDSKINS Trademarks on Disparagement Grounds

Author: Morgan E. Smith

In a high-profile precedential decision, a divided TTAB panel cancelled six REDSKINS trademarks for various entertainment services including professional football contests and cheerleading because the marks contained matter which may disparage a substantial composite of Native Americans. After conspicuously noting that its decision affected registration, not use, of the REDSKINS marks, the Board recounted the first, decades-long challenge to the marks, begun in 1992 and culminating in a D.C. Circuit Court of Appeals’ decision that laches barred the petitioners’ claims. Pro-Football, Inc. v. Harjo, 90 USPQ2d 1593 (D.C. Cir. 2009). The Blackhorse petitioners filed this cancellation proceeding while Harjo was pending and focused their claim on whether the term REDSKIN was disparaging to Native Americans.

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Prior Registration Defense Not Available When a Mark is Challenged as Merely Descriptive

Author: Naresh Kilaru

Can a mark be challenged as merely descriptive when the owner of the mark also owns an incontestable registration for the identical mark covering substantially identical services? The Board recently addressed this question in Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ.2d 1458 (TTAB 2014).

The petitioner in this case owned two registrations for the mark PERKS covering volume discount buying services. One registration was incontestable; the other was not. Petitioner sought to cancel a registration for the mark PERKSPOT covering similar services based on a likelihood of confusion. Respondent counterclaimed that Petitioner’s PERKS mark was generic (with respect to the incontestable registration) or descriptive (with respect to the other registration).

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TTAB Reluctant to Grant Summary Judgment Based Solely on Default Admissions

Author: Julia Anne Matheson

In its recent precedential ruling in SARL Corexco v. Webid Consulting Ltd., the TTAB offered insight into the Board’s position on granting summary judgment based solely on admissions obtained by default under FRCP 36(a)(3).

Petitioner SARL moved for summary judgment in its cancellation action against UK registrant Webid’s registration on the dual grounds of likelihood of confusion and that the registration was void ab initio. With respect to its likelihood of confusion claim, SARL’s motion for summary judgment was based entirely on default admissions resulting from Webid’s failure to timely respond to discovery. In opposing the summary judgment motion, Webid cross moved to withdraw its default admissions in favor of the substantive responses it served on SARL four days after its original discovery deadline. Webid blamed its delay on the parties’ ongoing settlement discussions.

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