Chinese tire manufacturer wins challenge to their trademark. DOUBLE COIN v. TRU

A trademark is something that a product seller uses to identify the products it sells. A word, phrase or symbol is what most people commonly think of as a trademark, but anything that a product seller uses to distinguish its products from competitor’s products can be granted trademark protection. Obtaining a right to a trademark law in the United States is based on using the trademark in commerce. The first person to use a trademark to brand products is considered the senior user and has priority over junior users of a trademark. A trademark can be registered with the United States Patent and Trademark Office to strengthen the rights associated with a trademark, however registration is not required to begin using a trademark to brand products.

Trademark law is not intended to allow a trademark owner to accumulate a collection of trademarks that go unused. To be granted trademark registration in the United States, evidence of the trademark being used in commerce must be presented at some stage of the trademark registration process. To maintain a registered trademark in the United States a trademark owner must file maintenance documents which demonstrate the trademark continues to be used in commerce. If a trademark owner stops using a trademark in commerce, then the trademark owner will eventually loose their claim to the trademark.

According to 15 USC 1127, a trademark is considered abandoned if “its use has been discontinued with intent not to resume such use.” The intent not to resume may be inferred from circumstances. Trademark abandonment, therefore, requires two elements: 1) nonuse; and 2) intent not to resume use. If someone believes that a registered trademark has been abandoned by its owner, then they can petition the United States Patent and Trademark Office to cancel the registration for the abandoned trademark. Motivation to cancel an abandoned trademark might arise when a new trademark application is being denied registration because the USPTO believes the new trademark is confusingly similar to an already registered trademark. If the new trademark applicant can get the old, abandoned, trademark canceled then that would clear the path for the new trademark to be registered. Successfully getting a registered trademark canceled for abandonment depends on what evidence can be presented to the USPTO.

DOUBLE COIN HOLDINGS LTD. v. TRU DEVELOPMENT, Cancellation No. 92063808 (TTAB 2019) is a case that demonstrates the evidence that must be shown to prove abandonment of a trademark. The Petitioner in this case, Double Coin, sought cancellation of Respondent’s ROAD WARRIOR registration under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the basis of alleged priority and likelihood of confusion with its registered mark WARRIOR. The Respondent, Tru, owns the trademark registration on the Principal Register for the mark ROAD WARRIOR for “tires”. The Respondent counterclaimed for cancellation of the WARRIOR trademark on the ground that the Petitioner abandoned the mark within the meaning of Trademark Act Section 45, 15 U.S.C. § 1127, either by explicitly abandoning it or by discontinuing use of the mark with the intent not to resume use. The cancelation proceeding was heard by the Trademark Trial and Appeal Board (TTAB), an administrative board within the USPTO.

The TTAB found that the Petitioner met its burden of proof to cancel ROAD WARRIOR registration and that the Respondent failed to demonstrate that the Petitioner’s WARRIOR trademark had been abandoned. The TTAB noted that in 2015 tariffs made the Petitioner’s products produced in China unmarketable in the United States, the Petitioner temporarily stopped selling its products when inventory was exhausted. The Petitioner then resumed sales of WARRIOR branded products in 2018 when it began manufacturing in Thailand. The Respondent claimed that the Petitioner expressly abandoned the WARRIOR trademark when it announced in 2015 that tariffs were forcing a halt of sales. The TTAB held that an industry announcement is insufficient to demonstrate an intent to abandon a trademark and further the Petitioner’s efforts to resume sales between 2015 and 2018 demonstrated an intent to resume the use of the trademark.

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