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Petition to Cancel at Trademark Board
Anonymous4 views4 answers
A cancellation proceeding is pending and the two claims on of which is fraud on the registration (there is none) and genericness (now at this point in time). Does the Board take into consideration the strength of marks in a case like this? Seems unnecessary.
James JuoIntellectual Property Law AttorneyLos Angeles, CA ·
The strength of a mark generally falls on a spectrum from fanciful/arbitrary, to suggestive, to descriptive, and to generic. Thus, a claim "genericness" inherently involves the strength of the mark.
If the TM is very strong, that means it's not generic, because it's very closely associated with your particular source.
Hopefully you have counsel and are not trying to DIY this defense of your TM.
Brian Patrick KinderTrademark Infringement AttorneyIrvine, CA ·
Short answer, yes.
Long answer.
The strength of a mark falls along a spectrum with a generic term falling on the end where there is no strength and the term is not a trademark. Sometimes legal jargon makes things sound more complicated than necessary. So, here is a very easy way to distinguish between a trademark and a generic term (and you don't need to be a lawyer to make the call): a trademark is an adjective, a generic term is a noun.
As an example, lots of people like to (incorrectly) point to the term Kleenex when talking about genericness. Although it is true that lots of people might ask for a Kleenex (i.e., a noun), at the end of the day I think everyone understands that the term Kleenex is actually a brand name (i.e., an adjective) and that you are actually asking for a Kleenex brand (adjective) facial tissue (noun). In contrast, the term facial tissue (when used in connection with facial tissues) is a noun and therefore not a trademark.
That last sentence might have seemed odd, but keep in mind that if you used the term FACIAL TISSUE in connection with...oh, I don't know, say a rock band, then the term is not a noun. Instead, it is an adjective (FACIAL TISSUE) describing the noun.
So, to answer your question, yes, the Board will take into consideration the "strength of the mark" in determining the issue of whether or not a mark is generic. It will look at how the term used and in association with what type of underlying goods and services. From there, it will determine if the word is a noun or an adjective. If it is an adjective, then it will proceed with the next part of evaluating the stregth of the mark, namely, where along the spectrum it falls (see my colleague James Juo's excellent comments in that regard).
Hope that helps.
Like my colleagues above, I strongly urge you to hire a trademark attorney with experience in cancellation proceedings before the Trademark Trial and Appeal Board to work with you on this matter. Fraud is a claim with serious teeth, so you do not want to handle this by yourself.