Petition to cancel trademark must demonstrate standing to be successful. BANK v. JOHNSON

A trademark is a something that a producer of a product uses to distinguish its goods to consumers. Trademark holders are granted the right to exclude others from placing the trademark on goods not produced by the trademark holder. The motivation behind trademark law is to protect consumers, not to reward producers. Trademark law is intended to prevent consumer confusion and protect consumers from inferior quality products. Protection for a trademark begins merely by using a trademark in commerce. A trademark can be registered in the United States to strengthen the rights associated with the trademark, however, registration is not a prerequisite to begin using a trademark .

Registering a trademark in the United States begins with filing a trademark application with the United States Patent and Trademark Office. When a trademark is successfully registered with the United States Patent and Trademark Office, the trademark is placed on either the principal register of the supplemental register. However, even after a trademark is registered, that does not make the trademark immune from attack.

Trademark cancellation is the legal process of removing a registered trademark from the federal register. The Lanham Act provides for the trademark cancellation process. The process begins with a Petition to Cancel, which is usually argued before the Trademark Trial and Appeal Board. In some cases, a trademark can be canceled by a federal court. While the Trademark Trial and Appeal Board is not a federal court, there are still some requirements that a petitioner must meet to successfully submit a Petition to Cancel a trademark. One of those requirements is standing. To successfully cancel a trademark the petitioner must demonstrate that they have “a real interest in the proceedings” and “a reasonable basis” to believe that registration causes the petitioner damages. If the petitioner cannot demonstrate standing, then the Petition to Cancel will fail.

TODD C. BANK, v. AL JOHNSON’S SWEDISH RESTAURANT & BUTIK, INC., 2019-1880 (C.A.F.C. 2019) is a case which revolves around the requirement a petitioner demonstrates standing in a petition to cancel a trademark registration. The trademark this case revolves around is goats on the roof of a restaurant. The appellant is a restaurant in Wisconsin that has grass growing on its roof. The restaurant maintains a small herd of goats that graze on the roof top grass. This distinctive trade dress has been registered as a trademark, Registration Number 2,007,624 (“Goats on the Roof Registration”).

The petitioner in this case is a member of the public that does not like the idea of animals being used to advertise a business. The petitioner filed three separate petitions to cancel the trademark registration, on the third failed attempt the Trademark Trial and Appeal Board found that the petitioner lacked standing to file a Petition to Cancel. The petitioner appealed the decision to the Court of Appeals for the Federal Circuit.

The Federal Circuit dismissed the appeal because it found the petitioner lacked standing. The petitioner sought to cancel the Goats on the Roof Registration as functional, alleging that the trade dress “is demeaning to” goats, which, in turn, “is offensive to [the petitioner] and denigrates the value he [and others] place on the respect, dignity, and worth of animals.” However, the Supreme Court’s decision in Matal v. Tam, 137 S. Ct. 1744, 1764 (2017) held the prohibition on the registration of disparaging marks under the Lanham Act unconstitutional. Therefore disparagement is no longer grounds to sustain a trademark cancellation. Based on Tam the Federal Circuit found that the petitioner lacks standing because because he failed to plead a real interest and reasonable basis for his belief of damage.

The Federal Circuit noted that the petitioner was given the opportunity to revise his petition and remedy the standing defect multiple times, which he did not do. Based on this repeated failure the Federal Circuit found the petitioner’s action frivolous and awarded the appellant costs and attorneys fees.

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