The Trademark Trial and Appeal Board: Be careful, namely, of what you wish for

In the first precedential Trademark Trial and Appeal Board decision on the merits of an expungement proceeding under the Trademark Modernization Act of 2020 (TMA), the TTAB affirmed the U.S. Patent and Trademark Office’s decisions to cancel two registrations because the registrant had not shown that the mark was used for the listed goods.

The matter is a cautionary tale for trademark applicants about choosing the words used to identify goods and services.

In October 2016, Locus Link USA applied to register SMARTLOCK in standard characters and stylized form for “components for air conditioning and cooling systems, namely, evaporative air coolers.” The applications proceeded smoothly and notices of allowance were issued the following May. Locus Link filed specimens of use including webpage screen shots where products including “flare connectors” were pictured, as well as product packaging. The statements of use were accepted and the registrations issued January 9, 2018.

On July 12, 2022, the USPTO received petitions for expungement of both registrations claiming that the SMARTLOCK mark had never been used for the goods. The USPTO instituted the expungement proceedings. In its arguments in response, Locus Link emphasized that its mark was used for components for air conditioning and cooling systems, such as the connectors pictured in its specimens.

The matter eventually reached the TTAB, which found that “namely” in the identification of goods modified the term “components,” reading the identification as, “components…namely, evaporative air coolers.” Because the mark was not used on evaporative air coolers, the Board held that mark was not in use for the goods and the registrations should be cancelled.

Two years (and counting) of TMA proceedings

At the very end of 2021, two new ex parte procedures became available under the TMA: expungement and reexamination. Expungement allows anyone to request cancellation of some or all goods and services in a registration on the grounds that the mark has never been used in U.S. commerce for those goods/services. Reexamination considers whether the mark was in actual use in U.S. commerce at the time alleged in the application.

Anyone can petition for expungement or reexamination. When a petition for expungement or reexamination is filed, the USPTO will determine whether it provides prima facie evidence that the mark has not been used within the required period. If so, the USPTO will institute the proceeding. In other words, once the PTO determines that the petition provided sufficient evidence of non-use, the petitioner is no longer involved. This differs from TTAB opposition and cancellation proceedings, which are between two parties and resemble litigation. In addition, the USPTO can bring an expungement or reexamination on its own initiative.

According to the USPTO’s database of expungement and reexamination proceedings, around 259 petitions for expungement were filed by third parties since the system has been available, while only around 20 were instituted by the Director. Of around 150 expungement proceedings that were initiated (that is, the USPTO found that the petitioner submitted sufficient evidence of non-use to begin the formal proceeding), the USPTO has issued nearly 70 full cancellations. In contrast, more than 800 full cancellation notices have issued in reexamination matters.

A tale of two interpretations

The TTAB in the SMARTLOCK matter focused on two words used in the identification: “namely” and “components.” According to the Trademark Manual of Examining Procedure (TMEP), “The goods or services listed after ‘namely,’ … must further define the introductory wording that precedes ‘namely’ …”

The Board found that “namely” modified all of the preceding wording, “components for air conditioning and cooling systems.” On the other hand, registrant argued that “namely” modified only “air conditioning and cooling systems,” such that it merely needed to show evidence of use of components for evaporative air coolers – such as connectors – not of the air coolers themselves.

This matter was further complicated by U.S. trademark practice regarding the term “component.” As the Board noted in the decision, the TMEP states that:

When a mark is used to identify only a component or ingredient of a product, and not the entire product, the identification must (1) precisely set forth the common name of the component or ingredient, (2) indicate that the component or ingredient is sold as a component or ingredient of another finished product, and (3) set forth the common name of the finished product of which the identified component or ingredient forms a part, e.g., “acoustic baffles sold as a component of loudspeakers.”  …  The identification should leave no doubt that the mark refers only to the component or ingredient and not to the entire product.

The Board read “evaporative air coolers” to be the common name of the “components for air conditioning and cooling systems.” The Board also held that the registrant’s classification of the goods in Class 11 (“Apparatus and installations for lighting, heating, cooling, steam generating, cooking, drying, ventilating, water supply and sanitary purposes”) was consistent with the USPTO’s position that the goods are “evaporative air coolers” rather than components like connectors, which would be in a different class.

In a section of the decision that may be frustrating to some trademark attorneys, the Board noted that it was not bound by the Examining Attorney’s decision to accept the identification of goods and the specimen during the application stage. Although this is legally correct, one wonders what may have happened if the Examining Attorney had applied a bit more scrutiny before the registrations issued.

Word choice matters

On March 14, 2023, after the USPTO had initiated the expungement, Locus Link filed a new application for SMARTLOCK, which covers a number of metal pipe fittings and connectors. The application is now suspended pending a prior filed application for SMARTLOK-COLDWELD.

This case highlights important considerations before filing a new application. It is often helpful to file for a broad identification of goods and services (as long as the applicant has a bona fide intention to use the mark for them). The application can be amended to delete goods/services, but not to add new. Think carefully before using limiting terms like “namely.”

This case underscores the importance of communicating with clients about the potential consequences of imprecise language in the identification of goods and services. Plain and clear language and an understanding of the client’s plans for a mark aren’t always guaranteed to take the wrinkles out of the application process, but can go a long way.

About the Author: Suzi Morales is a writer and editor specialising in IP. She previously practised IP law, including trade mark prosecution and all types of IP litigation, for 15 years. Learn more about Suzi’s work at www.suzimorales.com/intellectual-property-law-marketing