Petition to Cancell Trademark Registration

[IrvineCAGuy]

When can one company file a Petition to Cancel a mark with the Federal Trademark office, and on what basis?

By way of example, let's say Mrs. Fields Cookies goes out of business.
One company buys the recipe to make Mrs. Fields cookies, and starts a business calling their cookies "MFC Cookies."
Customers start to buy these cookies because they are good, and they are reminded of the original Mrs. Fields.

Now, another company (a business that buys up trademarks and licenses them to other manufacturers), gets the "Mrs. Fields Cookies" trademark registration. They then license that brand and to a company that starts to make cookies using a recipe from the back of a oats box, or their grandmother. Customers buy the Mrs. Fields brand cookies but are disappointed.

So two questions:

Can MFC Cookies file a petition to Cancel the "Mrs. Fields Cookies" registration and then take that registration over on the basis that customers are confused - MFC cookies look and taste like the "Mrs. Fields" so why not get the registration brand back so that customers can buy the brand name and get the brand product? These cookies have been registered since 1960 so customers know and want the real thing. They can tell the difference.

Can the registrant of "Mrs. Fields Cookies" sue MFC because their cookies, while being the real McCoy, are confusing their customers - they can't flog their inferior cookie when customers know MFC is the real-deal? (Mrs. Fields Cookies is used here just as an example).

 

[justalayman]

He who owns the mark has a right to do with it what they choose.

Can MFC Cookies file a petition to Cancel the "Mrs. Fields Cookies"

Not if the new company legitimately acquired the mark. MFC should have sought to purchase the mark if they were worried about it.

Can the registrant of "Mrs. Fields Cookies" sue MFC because their cookies, while being the real McCoy, are confusing their customers

but they aren't the real McCoy. They are MFC cookies. They just happen to taste like Mrs. Fields cookies used to taste.

Companies often change their signature taste or product. Coke tried it but was not successful. If they had been, do you believe that a company that acquired the original formula (it wouldn't happen but this is for example purposes) would have a right to sue Coke to stop them from using the name Coke based on your arguments?

 

[quincy]

When can one company file a Petition to Cancel a mark with the Federal Trademark office, and on what basis?

Anyone who will be harmed by the registration of a mark can oppose the registration of the mark within 30 days of the mark's publication in the Official Gazette (with extensions to the 30 days possible). The opposition must be in writing.

Or if the mark is already on the Principal Register, a petition to cancel the mark can be filed - see 15 USC Section 1064 for requirements.

And see 15 USC Section 1092 for information on opposing the registration of marks proposed for the Supplemental Register.

http://uspto.gov

By way of example, let's say Mrs. Fields Cookies goes out of business.
One company buys the recipe to make Mrs. Fields cookies, and starts a business calling their cookies "MFC Cookies."
Customers start to buy these cookies because they are good, and they are reminded of the original Mrs. Fields.

Now, another company (a business that buys up trademarks and licenses them to other manufacturers), gets the "Mrs. Fields Cookies" trademark registration. They then license that brand and to a company that starts to make cookies using a recipe from the back of a oats box, or their grandmother. Customers buy the Mrs. Fields brand cookies but are disappointed.

So two questions:

Can MFC Cookies file a petition to Cancel the "Mrs. Fields Cookies" registration and then take that registration over on the basis that customers are confused - MFC cookies look and taste like the "Mrs. Fields" so why not get the registration brand back so that customers can buy the brand name and get the brand product? These cookies have been registered since 1960 so customers know and want the real thing. They can tell the difference.

Can the registrant of "Mrs. Fields Cookies" sue MFC because their cookies, while being the real McCoy, are confusing their customers - they can't flog their inferior cookie when customers know MFC is the real-deal? (Mrs. Fields Cookies is used here just as an example).

First, anyone can sue anyone else for pretty much any reason at all. Suits just don't get very far if they have no merit.

The fact that the tastes of the cookies confuse consumers will not be a good basis for a trademark infringement suit. If the new "Mrs. Fields Cookies" confuses consumers into believing the company is "MFC Cookies," because the names cause confusion or the packaging confuses consumers or the logos confuse consumers, etc., then MFC Cookies could have a trademark infringement suit against the new Mrs. Fields.

 

[IrvineCAGuy]

Tried to get trademark

He who owns the mark has a right to do with it what they choose.

Thanks for that answer. Actually we were granted the right to buy the trademark, but then the interium trademark holder, renigged on his offer and sold it to someone else.

I've also read this:

​

In various jurisdictions a trademark may be sold with or without the underlying goodwill which subsists in the business associated with the mark. However, this is not the case in the United States, where the courts have held that this would "be a fraud upon the public". In the U.S., trademark registration can therefore only be sold and assigned if accompanied by the sale of an underlying asset. Examples of assets whose sale would ordinarily support the assignment of a mark include the sale of the machinery used to produce the goods that bear the mark, or the sale of the corporation (or subsidiary) that produces the trademarked goods.

The original mark was not sold with the "recipe."

 

[quincy]

I've also read this:

​

In various jurisdictions a trademark may be sold with or without the underlying goodwill which subsists in the business associated with the mark. However, this is not the case in the United States, where the courts have held that this would "be a fraud upon the public". In the U.S., trademark registration can therefore only be sold and assigned if accompanied by the sale of an underlying asset. Examples of assets whose sale would ordinarily support the assignment of a mark include the sale of the machinery used to produce the goods that bear the mark, or the sale of the corporation (or subsidiary) that produces the trademarked goods.

The original mark was not sold with the "recipe."

From what you are quoting, IrvineCAGuy?

For an interesting look at the purchase of a famous trademark, you can check out the history of "Famous Amos" and his Famous Amos Cookie Company (with the Amos name and image now owned by Kellogg's), or search for Wally Amos, Uncle Noname Company, or "Wally Amos Presents Chip and Cookie."

From what state or country are you posting? (just wondering if your user name reflects your location or not)

 

[quincy]

... I've also read this:

​

In various jurisdictions a trademark may be sold with or without the underlying goodwill which subsists in the business associated with the mark. However, this is not the case in the United States, where the courts have held that this would "be a fraud upon the public". In the U.S., trademark registration can therefore only be sold and assigned if accompanied by the sale of an underlying asset. Examples of assets whose sale would ordinarily support the assignment of a mark include the sale of the machinery used to produce the goods that bear the mark, or the sale of the corporation (or subsidiary) that produces the trademarked goods.

What IrvineCAGuy read, and quoted verbatim, is probably from a Wikipedia article ("Trademark") although it could be from the Institute of International Trade, affiliated with the West Bengal University of Technology in India (where expanded text can be located), or from various and assorted other websites and blogs where this same portion has been quoted (usually without source).

Trademark laws and copyright laws in different countries may share some similarities but they also vary in significant ways. For information on U.S. copyright law, you can go to http://www.copyright.gov and for U.S. trademark and patent laws, you can go to http://www.uspto.gov.