October 24, 2021

Volume XI, Number 297

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October 22, 2021

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SEYIDOGLU: Even “Incontestable” Trademark Registrations Are Vulnerable to Cancellation

Gaziantepli Habes Seyidoglu Baklavalari Uluslararasi Nakliyat ve San. Tic. Ltd. Sti. (“Petitioner”), a major manufacturer of food products in Turkey, filed a cancellation proceeding with the Trademark Trial and Appeal Board (the “TTAB”) to cancel Nema Food Distribution Inc.’s (“Respondent”) trademark SEYIDOGLU for various food products, which the TTAB granted. See Gaziantepli Habes Seyidoglu Baklavalari Uluslararasi Nakliyat ve San. Tic. Ltd. Sti. v. Nema Food Distribution Inc., Cancellation No. 92070059 (July 26, 2021) [not precedential]. Although the trademark at issue had achieved incontestable status, the TTAB found that Nema Food Distribution’s SEYIDOGLU word mark falsely suggests a connection with Petitioner. However, the TTAB found that Petitioner failed to sufficiently demonstrate Nema Food Distribution’s intent to deceive the trademark office in procuring the SEYIDOGLU registration and dismissed Petitioner’s claim for fraud.

In this case, Petitioner previously exported its Turkish food products bearing the mark SEYIDOGLU to the U.S. through a subsidiary of Respondent Nema Food Distribution. Respondent, a distributor of Petitioner’s food products, filed an application for SEYIDOGLU at the USPTO. Petitioner eventually terminated its distribution agreement with Respondent. The distribution agreement between the parties did not give Respondent the right to register or to an ownership interest in the SEYIDOGLU mark.

Fraud

A party alleging fraud in the procurement of a trademark registration faces a heavy burden to prove fraud by clear and convincing evidence.

The TTAB found that Petitioner was clearly the owner of the mark at the time Respondent applied for the SEYIDOGLU mark and noted that “[m]erely being a distributor does not cover ownership of a mark for the goods being distributed.” So, Respondent’s statement in the application that it was the owner of the mark was material and false. However, Petitioner failed to prove by clear and convincing evidence that Respondent intended to deceive the USPTO when it filed the SEYIDOGLU application. Consequently, Petitioner’s claim for fraud failed.

Section 2(a) False Suggestion of Connection

The TTAB found that the term SEYIDOGLU, in the context of Respondent’s food items, unmistakably and uniquely points to Petitioner (who is no longer related to Respondent). SEYIDOGLU is a close approximation of Petitioner’s name and identity, and Petitioner’s products are well known within the Turkish-American community. Respondent did not dispute Petitioner’s fame or reputation.

Therefore, the TTAB determined that SEYIDOGLU is unmistakably associated with and falsely suggests a connection with Petitioner sufficient to prove its Section 2(a) claim for cancellation of Respondent’s SEYIDOGLU registration.

Incontestable Trademark Registrations Are Not Bulletproof

The most valuable aspect of incontestable trademark registration is that it can no longer be challenged on the two most common grounds to invalidate trademark rights: likelihood of confusion under Section 2(d) and descriptiveness under Section 2(e). However, the term “incontestable” is somewhat a misnomer because registrations that achieve incontestable status are by no means bulletproof and may still be challenged.

The grounds for which an incontestable registration may be challenged are set forth in Section 14 and include:

  • The mark has become generic

  • The mark is functional

  • The mark has been abandoned

  • The registration was obtained fraudulently

  • The mark violates the provisions of Section 2(a)

Here, Petitioner was able to invalidate Respondent’s rights in the SEYIDOGLU incontestable registration on the basis that there existed a false suggestion of a connection among Respondent and Petitioner.

Benjamin D. Schwartz also contributed to this article.

©2021 Norris McLaughlin P.A., All Rights ReservedNational Law Review, Volume XI, Number 232
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About this Author

Danielle M. DeFilippis Intellectual Property Attorney Norris McLaughlin New York, NY
Member

Danielle M. DeFilippis, Co-Chair of the firm’s Intellectual Property Law Practice Group, focuses her practice on intellectual property matters and litigation. She appears on behalf of individual and corporate clients in all phases of litigation from commencement through trial.  Danielle regularly serves as lead counsel in cases before federal and state courts, the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office, and alternative resolution forums.

Danielle has represented clients in a variety of industries, most notably, food and beverage, liquor, jewelry,...

917-369-8841
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