Trademark for frozen alcohol treats canceled for abandonment. BOOZE POPS v. INDIGO ICE

A trademark is something that a producer of a product uses to distinguish its products from competitors. Trademark holders are granted the right to exclude others from placing the trademark on products 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. 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.

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. 15 U.S.C. § 1127 defines “abandonment” of a mark as when the use of a trademark “has been discontinued with intent not to resume such use.” To prevail on its claim of abandonment, Petitioner must demonstrate by a preponderance of the evidence that there is no genuine dispute that Respondent has ceased use of the mark without intent to resume use.

BOOZE POPS, LLC v. INDIGO ICE CORP., Cancellation No. 92068413 (TTAB 2020) is an example of a case where a trademark applicant was able to cancel a trademark for abandonment.

Petitioner in this case filed trademark Application Serial No. 87/681813 to register the mark BOOZE POPS with the USPTO for services identified as mobile street vendor services featuring food and drink. The application was refused registration due to the existence of Respondent’s Registration No. 5,201,202 for the mark BOOZY POPS used to identify alcoholic cocktails in the form of frozen pops. Petitioner filed a Petition to Cancel on several grounds including abandonment.

The TTAB found that the refusal to register Petitioner’s trademark in light of Respondent’s registration was sufficient to grant Petitioner standing to file a Petition to Cancel. Petitioner’s key argument with respect to abandonment was that the Alcohol and Tobacco Tax and Trade Bureau (TTB) regulates the products sold by the Respondent and has refused to approve BOOZY POPS for use on Respondent’s products. Respondent claimed that its products were evolving from “Alcoholic cocktails in the form of frozen pops” to “frozen pop with alcohol” to meet TTB requirements. However Respondent failed to submit evidence of its evolved use of the registered trademark. Based on these findings the TTAB granted the Petition to Cancel Registration No. 5,201,202.

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