SKULL trademark for distilled spirits canceled for nonuse. GLOBEFILL v. CALAVERA

A trademark is something that the producer of a product uses to distinguish its products from competitors. Trademark holders are granted the exclusive right to brand products with their trademark. 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. A trademark application will be scrutinized to ensure that the applied for trademark does not conflict with any trademarks which are already registered. Assuming that all the requirements are met, the trademark is placed on either the principal register of the supplemental register. However, after a trademark is registered, the trademark is not irrevocable.

Using a trademark in commerce is the key to claiming a right to the trademark in the United States. A trademark cannot be registered in the United States if a trademark has not been used in commerce. If a trademark applicant hasn’t used their trademark in commerce, but intends to use the trademark in the future, they can can file an application to register their trademark with an intent-to-use (ITU) filing basis. The trademark applicant must show actual use of their mark in commerce by filing documents and paying additional fees within certain time frames before the trademark may register. If a trademark applicant does not demonstrate that they are actually using the trademark they are not entitled to registration.

Trademark cancellation is the process of removing a registered trademark from the trademark federal register. The Lanham Act provides for the trademark cancellation process. The process begins with a Petition to Cancel. To successfully cancel a trademark a petitioner must demonstrate that they have “a real interest in the proceedings” and “a reasonable basis” to believe that registration causes the petitioner damages. The Petition to Cancel must also state a reason for cancellation such as abandonment. One of the grounds for which a trademark can be canceled is nonuse. If a petitioner can show that a trademark was not used then the trademark registration can be canceled.

GLOBEFILL INC. v. CALAVERA TEQUILA CO LLC, Cancellation No. 92071386 (TTAB 2021) is an example of a trademark registration that was canceled because the owner of the trademark didn’t actually use the trademark in commerce.

Respondent in this case, Calavera Tequilla, owns Registration No. 4580425 for the mark SKULL in standard characters on the Principal Register, for “Distilled Spirits” in International Class 33. The registration issued from an underlying application filed February 27, 2011 under 15 U.S.C. § 1051(b), based on a bona fide intent to use the mark in commerce. The registration ultimately registered under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based on an allegation of August 30, 2013 as the date of first use anywhere and in commerce following Respondent’s submission an acceptable substitute Statement of Use.

Petitioner sells Tequila in a glass bottle shaped like a skull under the trademark CRYSTALHEAD. Consumers started calling Petitioner’s Tequila the skull bottle and Peitioner felt that this would eventually lead to consumer confusion between Globefill and Calaver’a products. Petitioner requested that the SKULL Registration be canceled based on three separate claims: nonuse, abandonment, and fraud.

The Trademark Trail and Appeal Board heard the case. Petitioner argued that Respondent failed to make bona fide use of its mark as of August 30, 2013, the deadline for filing an acceptable substitute Statement of Use. To support its argument Petitioner quoted Respondent’s own statements. During discovery the Respondent expressly admitted that it was not using the SKULL mark in commerce for “distilled spirits” as of the deadline for filing its substitute Statement of Use, and admitted that Respondent has never used the SKULL mark in commerce. The TTAB granted the Petition to Cancel because it found that Respondent has offered no evidence it had been using the mark in commerce as of August 30, 2013.

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