May 11, 2017

Family Feud

You may be familiar with the old adage that "the best defense is a good offense." A recent case decided by the Trademark Trial and Appeal Board (the "TTAB"), Azeka Building Corp. v. Bryan Kenji Azeka, Opp. No. 91218679 (May 3, 2017) suggests that a good offense requires a good defense as well.

In Azeka, the president of the opposer and the applicant were relatives, though they couldn't even agree on the nature of their relationship (whether second cousins or first cousins once removed). The applicant sought to register the mark AZEKA'S RIBS for use with barbecue sauce. The opposer opposed registration of applicant's mark on multiple grounds, including likelihood of confusion and that applicant's mark was primarily merely a surname. The opposer prevailed on the latter claim. The application had been filed on an intent-to-use basis and the applicant could not prove use and amend the application to seek registration on the supplemental register after the TTAB rendered its decision. Therefore, the TTAB's decision meant that the application would go abandoned. In many cases that would be the end of the story. But here, the applicant asked the TTAB to decide the likelihood of confusion issue (and especially applicant's abandonment defense) as well.

Hawaiian Sauce

Images of applicant's product

The TTAB perceived that the primary dispute between the parties revolved around priority. Though the opposer alleged likelihood of confusion, the applicant countered that the opposer had abandoned its rights in the mark AZEKA'S RIBS, leaving it free for applicant to use. Therefore, the TTAB agreed to decide the likelihood of confusion issue. Ultimately, the TTAB found that the opposer had abandoned its rights in the mark because it had not used the mark in over a decade, and the sporadic (and unsuccessful) attempts at licenses during that period of time were insufficient to overcome the presumption of abandonment that arose from three consecutive years of non-use.

Thus, having won the surname argument, the opposer found itself in the unenviable position of having been found to have no rights in the mark it sought to protect. This seems like the more painful loss, like somehow losing the war just as you win the last battle. While the applicant may file a new application and seek registration on the supplemental register, the finding of abandonment prevents opposer from claiming priority to stop the new application from registering.

The Azeka case may be instructive on a number of issues. But perhaps one of the bigger take-aways should be: prepare for likely defenses and counterclaims prior to opposing registration of a mark or petitioning to cancel registration of a mark. If there are obvious weaknesses in your claims of ownership of the mark or registration, ability to prove use (or defend against alleged nonuse), or priority over the other party, pause and think carefully about whether and how to proceed. For example, could the opposer have resumed use prior to filing the notice of opposition? Could the opposer have made a strategic decision to limit the claims in the opposition? To be fair, hindsight is 20/20. The opposer may well have considered these issues. For example, it could reasonably have decided that it would be unlikely for the TTAB to decide the likelihood of confusion issue if it was not necessary to resolving the case and that having multiple claims in the opposition might sufficiently intimidate the applicant to prompt a rapid settlement. But for anyone contemplating an opposition, it is worth thinking carefully about what one can do to avoid or be prepared to defeat a defense or counterclaim the applicant might raise.

As a post-script, the applicant appears to be proceeding with his business plan by promoting his product online. But when a recent visitor to his website attempted to shop for barbecue sauce, she received the notice below:

Out Of Stock

For the sake of fans of the barbecue sauce, the Azeka family, and the TTAB, let's hope that "temporarily" refers to a period of time that is much shorter than ten years.