Tag: cancellation

For Whom the Za Tolls Update

You’re driving the Florida Keys when suddenly you get a hankering for pizza. Tragically there is no toll booth in sight. Minnesota attorney Tom James explains.

“You’re driving over the ocean in the Florida Keys when suddenly you get a hankering for a slice of pizza. Unfortunately, there is no toll booth in sight. What will you do?”

Some of you might remember an article I wrote several years ago that began this way. I was alluding to the strange case of a state turnpike authority that was suing a pizzeria for trademark infringement. Here is a very belated update on that case.

The lawsuit

The New Jersey Turnpike Authority filed a lawsuit against Jersey Boardwalk, a Florida pizzeria, for trademark infringement. It claimed the pizzeria’s mark was so similar to its mark that people were likely to mistakenly assume the pizza restaurant was connected in some way with the New Jersey Turnpike Authority. It accused the pizzeria of trading on the goodwill of the New Jersey Turnpike Authority. It sought an injunction, compensatory damages, and treble damages, claiming trademark infringement, dilution, and unfair competition.

Pizza

Pizza is an Italian food that was created in the Naples area of Southern Italy. It is made with different toppings. Some of the most common ones are mozzarella cheese, sausages, pepperoni, vegetables, tomatoes, spices and herbs. These toppings are put on a large piece of bread covered with sauce. The sauce is most often tomato-based, but other kinds of bases may be used. The bread is called a “crust.” Virtually any kind of topping can be put on a pizza. I have even witnessed otherwise rational people using chicken and pineapple as pizza toppings.

Pizza, like the ones made by Jersey Boardwalk Pizza, in trademark dispute with NJ Turnpike Authority

Disposition

The court ultimately dismissed the lawsuit on jurisdictional grounds. The court noted that the pizzeria does not have any stores in New Jersey. It had only made sales to a handful of New Jersey customers, and they were online sales. These contacts with New Jersey were “too attenuated to put the Defendants on notice that they would be subject to a trademark infringement suit in New Jersey,” the court ruled.

Nor did the company’s use of the word “Jersey” amount to purposeful availment of the privilege of doing business in New Jersey. Using the name of a state to conjure consumer interest in nostalgia or exoticism is not what “purposeful availment” of a state’s services or resources means, for purposes of Due Process analysis.

New Jersey Turnpike Authority v. Jersey  Boardwalk Franchising Co., Inc. et al.

USPTO proceedings

Years before this litigation, the Turnpike Authority had filed an opposition to the pizzeria’s application to register its mark. The United States Trademark Trials and Appeals Board (TTAB) dismissed the Turnpike Authority’s opposition to the pizzeria’s registration of the trademark for restaurant services.

After the registration certificate was issued, the Turnpike Authority filed a petition to cancel it. The U.S. TTAB denied the petition. (TTAB Opposition No. 91219067) The Board found that the Turnpike Authority failed to establish likelihood of confusion with its registered trademark for highway maintenance and information services. The Board did not believe that consumers would expect restaurant and highway maintenance services to come from the same source.

It is one of those kinds of cases that can make you simultaneously scratch and shake your head.

Read about other, perhaps less weird, trademark legal issues.

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Need help with a trademark or copyright matter? Contact Cokato, Minnesota attorney Tom James.

The Trademark Modernization Act

Not many people are aware that tucked into the 5,593-page Act are two major pieces of intellectual property legislation: the Copyright Alternative in Small-Claims Enforcement Act and the Trademark Modernization Act. Since the TM Act just went into effect, it seems appropriate to address it first.

Registered tradmeark symbol

The Consolidated Appropriations Act of 2021 was signed into law on December 27, 2020. Most people have heard of the provisions relating to COVID-19, such as rental and other kinds of financial assistance, and Title XIV of Division FF of Section 2 (COVID-19 Consumer Protection Act). Most people are probably also aware that it contains the usual annual appropriations for things like the promotion of women’s interests. Not as many people are aware, however, that tucked into the 5,593-page Act are two major pieces of intellectual property legislation: the Copyright Alternative in Small-Claims Enforcement Act (“the CASE Act of 2020”) and the Trademark Modernization Act (“the TM Act of 2020.”) I will be talking about the CASE Act in later articles. Since the TM Act just went into effect, it seems appropriate to address it first.

Injunctions against infringement

In order to obtain an injunction, it is necessary to convince a court that you will suffer irreparable harm unless the court issues one. That can be difficult – and expensive – to do.

Historically, courts relieved some of the burden on trademark owners by applying a rebuttable presumption of irreparable harm upon a showing of likelihood of confusion. The United States Supreme Court, however, disrupted that practice in some circuits in 2006. In eBay, Inc. v. MercExchange, 547 U.S. 388 (2006), the Court held that an injunction against patent infringement cannot be granted unless the plaintiff makes an evidentiary showing that irreparable harm will ensue unless an injunction is granted. A split in the circuits resulted with respect to the question whether the requirement also applies to injunctions against trademark infringement. Some courts continued to apply the presumption; others did not.

The TM Act resolves the split. Now, 15 U.S.C. § 1116(a) requires courts in all jurisdictions to apply a rebuttable presumption of irreparable harm upon a finding of likelihood of confusion with a federally registered trademark, when an injunction is sought under the Lanham Act. In the case of a motion for a preliminary injunction or TRO, the presumption arises upon a showing of likelihood of success on the merits of an infringement claim brought under the Lanham Act.

The rebuttable presumption applies not only to infringement claims, but also to claims for injunctive relief with respect to false advertising, unfair competition, trademark dilution, or cyberpiracy under Section 43 of the Lanham Act.

By codifying this rebuttable presumption in the Lanham Act, the TMA removes uncertainty in the law and makes it easier for trademark owners to establish entitlement to injunctive relief.

Throwing out unused trademarks

If you’ve ever conducted a trademark search at the USPTO website, you’ve probably noticed an overabundance of registrations. In many cases, a trademark is registered in more categories of products and services than is really needed. Trademarks are often registered for goods or services that either have never been used or are not currently being used in connection with the mark. The TM Act provides new ways of clearing some of them out.

Expungement

The TM Act makes non-use a basis for cancellation of a trademark registration. Cancellation of a trademark upon proof of abandonment is not new. The ability to remove unused goods or services from the coverage of the registration is. Moreover, an expungement does not require proof that the registrant has stopped using the mark since it was registered. To the contrary, it allows claims that a trademark has never been used (or has never been used for specified goods or services) to be made.

It is now possible to initiate a proceeding (called an “expungement”) to cancel a registration or narrow the categories of goods and services on the grounds of non-use.

Anyone may file an expungement petition. It may be brought between three and ten years after the registration. Until December 27, 2023, petitions to expunge trademarks may be brought with respect to registrations that are more than three years old, even if they are more than 10 years old. Thereafter, a petition may be brought only if the registration is between three and 10 years old.

Reexamination

The TM Act also makes it possible to petition the Trademark Office to reexamine the registration of a trademark. Under the TM Act, it will now be possible to seek the cancellation of a trademark on the grounds of that it was not actually used in commerce prior to the registration date. There is a 5-year limitations period for filing such a petition, measured from the date of issuance of the registration.

Who may initiate a proceeding

Anyone may initiate a proceeding. In addition, the USPTO may commence one on its own initiative. The filing fee is $400 per class of goods or services.

Appeals

The director’s determination with respect to an expungement or reexamination petition may be appealed. A party seeking to challenge the determination must first seek review from the Trademark Trials and Appeals Board (TTAB). Further review may then be sought from the Federal Circuit Court of Appeals.

Madrid Protocol registrations

A foreign or Madrid Protocol registration under Sections 44(e) or 66 cannot be cancelled on this new ground of non-use if the non-use was due to special circumstances excusing the non-use.

Office Action response deadlines

Currently, trademark applicants have six months to respond to an Office Action. The TM Act authorizes the USPTO to specify a shorter time period.

The USPTO has announced that people (other than Madrid Section 66(a) applicants) will have three months, instead of six, to respond to office actions. For $125, you can request a 3-month extension. This shorter time period, however, will not be implemented until December 1, 2022. Read more about the new Office Action response deadlines.

Third-party evidence in examinations

Finally, the Act facilitates the submission and consideration of evidence submitted by third parties during the examination process. In the past, opponents of an application for registration typically initiated an opposition proceeding to contest a registration application. Under the new provisions, we are likely to see more attempts to forestall registration even before the application is published for opposition.

The Law Office of Tom James

Need help with a trademark matter? Whether it’s an application to register a trademark, an expungement or re-examination petition, an opposition proceeding, or an appeal, Cokato, Minnesota attorney Thomas James at the Tom James Law Office can help you. You can also visit my extensive Trademark FAQs page.