NOBODY BEATS THE WIZ trademark still alive and kicking. JON BARGAINS v. P.C. RICHARD

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. Evidence of the trademark being used in commerce must be presented at some stage of the trademark registration process in the United States. To maintain a registered trademark, 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.

JON BARGAINS INC., v. P.C. RICHARD & SON LONG ISLAND CORP, 2020-1013 (C.A.F.C. 2020) illustrates a case where an infrequently used trademark survived a cancellation challenge.

This case began when Jon Bargains Inc. (Applicant) sought to register the mark WIZGEAR for “electronic accessories” on the Principal Register.

P.C. Richard & Son (Opposer) filed a Notice of Opposition against the registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark WIZGEAR for the identified goods so resembles Opposer’s registered marks for THE WIZ and NOBODY BEATS THE WIZ for retail store services in the field of consumer electronics and accessories as to be likely to cause confusion. Opposer acquired the trademarks and the registrations for the trademarks through a bankruptcy sale in September 2003. Since then no physical retail stores have been operated using the trademarks however, Opposer’s website displays the trademarks on its website.

Applicant counterclaimed to cancel Opposer’s pleaded registrations on the ground of abandonment and fraud. Applicant alleged that when Opposer filed its Declaration of Use and Renewal Application, it knowingly made a false statement that it was rendering retail store services in the field of records and tapes with the intent to deceive the USPTO.

The Trademark Trial and Appeal Board reviewed the evidence and concluded that Applicant filed to demonstrate that Opposers stopped using the trademarks for three consecutive years or that Opposer stopped using those trademarks with no intent to resume use, therefore cancellation based on abandonment was denied. The TTAB also found that Applicant failed to demonstrate Opposer’s intent to deceive the USPTO, therefore cancellation based on fraud was denied.

With respect to the likelihood of confusion between Applicant and Opposer’s trademark the TTAB applied the Dupont factors. The TTAB found that there was a likelihood of confusion because the trademarks are similar, the goods and services are closely related, the goods and services are offered similar trade channels to the same consumers and the goods and services of the parties are offered to ordinary consumers who may not exercise a high degree of purchasing care. Based on this the registration of Applicant’s trademark was refused. Applicant appealed the TTAB’s decision to the Court of Appeals for the Federal Circuit who affirmed the ruling with no comment.

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