IP Law Daily, TRADEMARK—TTAB: Registration of ARTNCRAFT cancelled due to common law mark’s prior use of identical mark, (Jun 13, 2023)

By Deirdre Kennedy

The likelihood of confusion between a registered mark and an identical common law mark that was in prior use was sufficient to warrant cancellation of the registration.

In an action to cancel registration of the mark ARTNCRAFT, the petitioner, who had used an identical common law mark on overlapping goods, was able to establish priority in the mark and show a likelihood of confusion between the marks, leading to cancellation of the registration. The Trademark Trial and Appeal Board rejected the registered mark owner’s argument that the petitioner had abandoned its common law mark. The petitioner did not intend to abandon its mark where its cessation of use was caused by the respondent’s enforcement actions, including sending a take-down notice to Amazon.com that prevented the petitioner from selling goods on the platform (Sancheti v. Tekwani, June 5, 2023, Lynch C.).

Petitioner Vardhman Sancheti filed a petition to cancel a registration owned by Respondent Bhupendra Tekwani DBA Artncraft for the standard-character mark ARTNCRAFT for various items of furniture, knobs and pulls in International Class 20. Petitioner based its petition on likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), with Petitioner’s alleged prior used common law mark ARTNCRAFT for ceramic door knobs, drawer handles, drawer pulls, paintings and tapestries. The marks are identical in sight, sound, and meaning and the goods to which they apply are also identical, or at least highly related.

Respondent’s mark had been used in commerce since March 8, 2017. On or about April 17, 2019, Respondent had issued a Take-Down Notice to Amazon.com stating that Petitioner’s use of the mark ARTNCRAFT was an infringement of his trademark rights as evidenced by U.S. Registration No. 5,708,405, and demanded that Petitioner’s listings under the ARTNCRAFT mark be removed. Amazon.com complied with this Take-Down Notice, and Petitioner was barred from posting his goods to Amazon under the ARTNCRAFT mark.

Petitioner then brought this action seeking cancellation of Respondent’s mark.

Statutory cause of action. Respondent contended that Petitioner had no entitlement to a statutory cause of action because he had no relevant trademark filings, and this alleged lack of “effort to protect the name in any way” equated to a lack of rights. The Board rejected this contention as an incorrect characterization of the law, which allows for statutory entitlement to a Section 2(d) claim based on common law use.

The Board found Petitioner made the requisite showing of real interest in the proceeding and a reasonable belief of damage from Respondent’s registrations by establishing his common law use of his pleaded mark, which is identical to Respondent’s registered mark, on goods that partially overlap with, and are related to, Respondent’s identified goods. Petitioner also asserted a plausible likelihood of confusion claim against the involved registration, thereby showing a real interest in this proceeding beyond that of a mere intermeddler, and a reasonable basis for his belief of damage. Finally, Petitioner showed his direct commercial interest by establishing that Respondent successfully had Petitioner’s goods barred from sale on the Amazon platform in the U.S. through Amazon’s takedown procedure, based on an allegation that Petitioner was infringing Respondent’s registered mark. Petitioner testified that the Amazon takedown resulted in a significant loss of inventory, and that he has not been able to reestablish his U.S. business under the mark through Amazon.

Respondent additionally argued that Petitioner had “abandoned” its mark because, following the take-down procedure, Petitioner had not sold goods under the ARTNCRAFT mark in the U.S. for three years. The Board noted, however, that a showing of non-abandonment is not required of Petitioner for entitlement to a statutory cause of action.

Priority. To establish priority on a likelihood of confusion claim under Section 2(d) of the Trademark Act, a party must prove by a preponderance of the evidence that it owns proprietary rights in a mark or trade name previously used in the U.S. which has not been abandoned. Respondent’s priority date was established as March 8, 2017, the date that his mark was first used in commerce. Petitioner claimed that he had sold goods in the U.S. under the ARTNCRAFT mark beginning in 2013 through platforms such as eBay and Amazon. Petitioner testified that in 2019 and prior years, before Respondent’s takedown notice, he “was selling primarily on United States” under the ARTNCRAFT mark, with more than two-third of the revenues from the U.S. He further testified that since the take-down order, he has been unable to reestablish U.S. sales through Amazon.

The Board found that Petitioner had used the pleaded ARTNCRAFT mark since 2013, well before Respondent’s priority date. Respondent’s argument that the mark was abandoned in 2019 was unpersuasive because where discontinued use is “occasioned by” enforcement activity such as Respondent’s takedown, the discontinuation of use does not reflect an “intent to abandon the mark,” particularly where the aggrieved party engages in vigorous efforts to defend itself, as Petitioner has done here by instituting a cancellation proceeding. Therefore, the Board found that Petitioner demonstrated priority of use.

Likelihood of confusion. In its likelihood of confusion analysis, the Board considered the similarity of the goods and channels of trade after establishing that the marks were identical. Although Respondent in his brief argued that the goods differed, he had admitted in his Answer that his goods “are identical to, or at least highly related to, the goods which Petitioner provides under the ARTNCRAFT Mark.” The Board considered him bound by this admission and found that Petitioner’s goods overlapped at least in part with Respondent’s identified goods and were therefore legally identical.

As for the trade channels and classes of consumers, the Board noted that where recited goods in a registration do not contain trade channel limitations, as was the case here, they are presumed to move in all channels of trade normal for those goods. Although this presumption did not apply to Petitioner’s common law rights, the Board applied the presumption to Respondent’s registration. This presumed overlap was confirmed by the record, which indicated that both parties sold their goods in the U.S. through Amazon.com.

Considering all the factors, the Board found that Petitioner proved his likelihood of confusion claim so that the petition to cancel was granted.

The Case is Cancellation No. 92077340.

Attorneys: Carl A. Hjort III (Bilicki Law Firm PC) for Vardhman Sancheti. Todd Wengrovsky (Law Offices of Todd Wengrovsky, PLLC) for Bhupendra Tekwani d/b/a Art N Craft.

Companies: Art N Craft

Cases: Trademark USPTO