Date: Jun 08, 2011
If at first you don't succeed in getting a certification mark cancelled under the trademark provisions of the Lanham Act, consider using the advertising provisions. That's the lesson of a curious recent decision.*
Both parties certify entities that recycle electronic products and both refer to each such entity as a "Certified Electronics Recycler." However, Defendant received a certification mark for that term from the U.S. Patent and Trademark Office.
Plaintiff sought a declaratory judgment that its own use of the term did not infringe Defendant's legal rights, because the term was generic. It also sought to cancel the term's registration.
The court agreed that the term was generic, but dismissed the complaint on two grounds. First, there was no Article III controversy – no evidence that Defendant intended to enforce any purported rights to the term. Second, Plaintiff had not pled an independent cause of action for which cancellation was a remedy.
Plaintiff came back to court with two different causes of action under the Act: (1) confusion-of-origin due to both parties using the term and (2) misleading advertising. Defendant's offending ad claimed that it was the only certifier that may provide "the trademarked designation of ‘Certified Electronics Recycler®.'"
The court dismissed the confusion-of-origin cause of action on the ground that it may not be used against a generic mark. The advertising count was upheld, however, even though the ad claim was literally true (i.e., only Defendant may use a "trademarked" term with the "®" registration symbol).
The court found it plausible that consumers could be misled by the ad into believing, among other false things, that the PTO registration represented a favorable substantive judgment not conferred on others.
And, as the court noted, cancellation of a mark's registration is one of the remedies under the Act's advertising provisions.
For more information please contact Dick Leighton at 202-434-4220 or Leighton@khlaw.com.
* Basel Action Network v. Int'l Ass'n of Electronic Recylers, et al., No C10-931 (W.D. Wa. June 7, 2011).