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[Steve Garrison]

Does anyone know if you can file a cancellation petition on another's mark based on a liklihood of confusion with a third party's previously used mark.  

Assume that your are harmed by the continued registration of the mark you are trying to cancel.  (i.e. you have standing to file the cancellation)

[JSonnabend]

Assume that your are harmed by the continued registration of the mark you are trying to cancel.  (i.e. you have standing to file the cancellation)

That assumption answers the question.  If you have standing, then you've articulated a plausible basis for cancelation.  Whether or not you can win on the merits is a different question.

- Jeff

[Steve Garrison]

Thanks for your response Jeff, but I disagree that my assumption answers the question.

You need both standing and grounds to file a cancellation.  My question was, assuming you have adequate standing, whether using another's mark to cancel constitutes adequate grounds.

[Steve Garrison]

I apologize, that last message should read:

Thanks for your response Jeff, but I disagree that my assumption answers the question.

You need both standing and grounds to file a cancellation.  My question was, assuming you have adequate standing, whether using another's mark to cancel constitutes adequate grounds.

[Isaac]

I think the problem here is that standing and grounds are not independent.   You seem to be interpreting "grounds" simply to mean being able to state an injury having a relationship to the applicant's activity.   I think it's more reasonable to subsume that inquiry into the question of standing, and your question assumed standing exists.

Of course that still means that the question you were really asking is left unanswered.  Namely whether the harm you describe creates standing to oppose the mark.  I'm kinda hoping that Jeff can answer that question because I certainly cannot.

[steve garrison]

I wasn't trying to interpret grounds as being equivalent to being able to state an injury.  That is standing...or in other words, from my understanding, standing for a cancellation means that you believe you will be harmed by the continued registration of the mark you are trying to cancel.

Grounds means there a valid reason why the mark you are trying to cancel can be cancelled.  For example, you could argue that the mark has become generic or your confusingly similar mark was in use before it.


My question is whether using another's confusingly similar mark is adequate grounds to cancel a mark whos continued registration causes injury to you.

[JSonnabend]

I understand your point.  Of course, merely stating that you're being harmed is insufficient if the "harm" is merely that occasioned by a valid trademark registration.

Beyond that trivial case, if you can properly plead harm, then you've both articulated a basis for standing and grounds for cancellation, generally speaking.

using another's confusingly similar mark is adequate grounds to cancel a mark whos continued registration causes injury to you

I'm not sure what the quoted passage means.  If you're saying you're using a third party's senior mark and that the junior registration is confusingly similar to it, then you may have grounds for cancellation provided you have some rights or interest in the senior mark.

- Jeff

[Steve Garrison]

OK we are getting somewhere!

Suppose my mark (Mark 1) is being opposed with the opposer alleging that their mark (Mark 2) is confusingly similar.  Mark 2 is more senior than Mark 1.

I would like to file a counterclaim to cancel Mark 2 based on a third party's more senior mark (Mark 3) that is confusingly similar to Mark 2.  I do not own or have any proprietary interest in Mark 3.

I have standing to file the cancellation as my status as a defendant in the opposition.  Can I use Mark 3 to cancel Mark 2 if I argue that Mark 3 is more senior and confusingly similar to Mark 2 without having any proprietary interest in Mark 3?  Are those sufficient grounds?

[Isaac]

OK we are getting somewhere!

Suppose my mark (Mark 1) is being opposed with the opposer alleging that their mark (Mark 2) is confusingly similar.  Mark 2 is more senior than Mark 1.

I would like to file a counterclaim to cancel Mark 2 based on a third party's more senior mark (Mark 3) that is confusingly similar to Mark 2.  I do not own or have any proprietary interest in Mark 3.

One thing to consider is that the PTO can cancel a registration but doing so does not cancel the trademark.  It's not clear to me how prevailing in your counterclaim is going to help you.

My guess is that you would not have standing any greater than that of the general public to challenge the registration of mark 2 based on similarity to Mark 3.  (Meaning none)  It might even be that the registration of mark 2 is incontestable on the grounds of being confusingly similar to another mark.

In any event, I think standing is an issue here.

[JSonnabend]

I have standing to file the cancellation as my status as a defendant in the opposition.

Which brings me back to my original post.  Your assumption that you have standing based on your "status as a defendant" is likely false.  More specifically, can you articulate how you are harmed due to Mark 2's confusing similarity to Mark 3?

Ultimately, I believe Isaac's analysis, namely, that you're in no different position with regard to your cancellation based on "Mark 3" than would be any non-party to the opposition.

Also, if your mark is confusingly similar to Mark 2, which in turn is confusingly similar to Mark 3, how is your mark not confusingly similar with Mark 3 as well?

- Jeff

[Steve Garrison]

The TTAB Manual 313.03 states that a counterclaimant for cancellation has inherent standing arising their position as defendant to the opposition.  

See also 202 uspq 840, 841.

I could also articulate the harm.  I am harmed by the continued registration of Mark 2, because the Mark 2 is being used to prevent me from registering Mark 1 through an opposition proceeding.

"Also, if your mark is confusingly similar to Mark 2, which in turn is confusingly similar to Mark 3, how is your mark not confusingly similar with Mark 3 as well?"

I am denying that Mark 1 is confusingly similar to Mark 2.  The owner of Mark 2 (aka the Opposer) alleged the similarity.

Isaac you mentioned two really interesting things:
1) so even if i am successful in the counterclaim (I cancel Mark 2), the opposer could still assert that their mark is confusingly similar in the opposition.
2) What authority are your relying on to state that a mark is incontestable if it is confusingly similar to another mark?

[Isaac]

:
1) so even if i am successful in the counterclaim (I cancel Mark 2), the opposer could still assert that their mark is confusingly similar in the opposition.

I believe that to be a possibility.   It might depend on the exact reasons for your success.

2) What authority are your relying on to state that a mark is incontestable if it is confusingly similar to another mark?

That's not quite what I said.   I suggested that a mark could be incontestable on those grounds.  See 15 U.S.C. § 1065.   [/quote]

a counterclaimant for cancellation has inherent standing arising their position as defendant to the opposition

You can sue for cancellation of the mark on some grounds, but I don't believe you  have standing to sue based on confusion with a third party's mark in which you hold no interest other than as a concerned citizen.

I think I see why you are parsing "grounds" out as a separate issue from "standing".    You are arguing that you are allowed to counterclaim for cancellation but wondering which particular grounds for cancellation will be entertained.

Remember that my opinion here is a guess from someone who has never been involved in an opposition and who is trying to remember the ever fading voice of a law professor who may have touched on the subject in passing.

[Steve Garrison]

"Remember"!?!?!  I think you have to mention that you are not an expert a first time in order to qualify it as a memory!.  

Thanks for your thoughts.

[Isaac]

"Remember"!?!?!  I think you have to mention that you are not an expert a first time in order to qualify it as a memory!.  

Thanks for your thoughts.

"Of course that still means that the question you were really asking is left unanswered.  Namely whether the harm you describe creates standing to oppose the mark.  I'm kinda hoping that Jeff can answer that question because I certainly cannot. "

[JSonnabend]

The TTAB Manual 313.03 states that a counterclaimant for cancellation has inherent standing arising [from] their position as defendant to the opposition.

I don't believe section 313.03 will help you, regardless of whether you're able to convince the panel that you technically have standing.  Standing is besides the point when you have no substantive case, which has essentially been my point from the start.  

I am harmed by the continued registration of Mark 2, because the Mark 2 is being used to prevent me from registering Mark 1 through an opposition proceeding.

Great, now go back and re-read my question, which you haven't answered at all.  How are you harmed by Mark 2's conflict with Mark 3?  All you've articulated is, "I'm harmed because a senior registration is preventing my registration."  That's no "harm" at all, that's what registrations are designed to do.  I think the bottom line, technical arguments aside, is that you stand about a snowball's chance in hell of winning on your third party mark argument.

If I may be so bold, Steve, you've come here seeking (free) advice, but when you get advice you don't like, you argue and insult.  Perhaps you know better than we (although I doubt it).  If so, good for you.  It wouldn't be the first time a pro se party hit on a wacky but successful argument.  Go do your research, make your arguments, and come back to tell us how you won.

- Jeff