In the intricate world of trademarks, one legal recourse is a vital tool for proprietors — trademark cancellation.
It’s a defensive mechanism designed to protect brand individuality and uniqueness when faced with potential infringements.
The Dispute and the Parties Involved
Tiarra Hamlett and Michael Hamlett Jr., the folks who own The Bronx Brand, are in a bit of a legal tussle with Bronx Native.
Both these brands sell clothing, and their products are somewhat similar, which is could cause confusion for customers. This similarity is at the heart of their disagreement.
Interestingly, both brands had to give up parts of their names — The Bronx Brand had to drop “Brand,” and Bronx Native had to let go of “Bronx.”However, Tiarra and Michael claim priority, having established their mark before Bronx Native.
This adds an extra twist to the whole situation.
Their argument has now reached the US Patent and Trademark Office’s (USPTO) Trademark Trial and Appeal Board (TTAB). This group is like a referee for fights over trademarks, including situations where one side wants to cancel the other’s trademark.
The TTAB will take a good, hard look at the evidence that both sides bring to the table to make sure they come to a fair decision. Currently, this proceeding is set for oral argument on December 13th, 2023.
Understanding the Trademark Application Process
The Bronx Brand, owned by Michael Hamlett Jr., officially stamped registered on its trademark on January 2, 2018. As part of the deal, they had to drop the word ‘Brand’ from their trademark. This was because ‘Brand’ was seen as just describing what they sell and didn’t really set them apart from other clothing lines (Source: USPTO TTABVUE).
On the flip side, Bronx Native, another clothing brand, got their trademark registered a bit later on May 22, 2018. In their case, they were asked to give up the word ‘Bronx’ from their trademark. The reason for this could be that ‘Bronx’ is a geographic location, and using it might make people think the brand is officially linked with the place (Source: USPTO TTABVUE).
Note: The United States Patent and Trademark Office, or USPTO for short, is the body that decides if a brand needs to drop certain words from its trademark. If a brand doesn’t agree to drop the words that the USPTO asks it to, then the USPTO can refuse to register the trademark (Source: USPTO).
The Reasons for Cancellation
The Bronx Brand moved to cancel the registration of Bronx Native for four reasons:
- The registration is void ab initio (Latin for void from the beginning), meaning it is requested to be canceled as if it were never registered.
- The Bronx Brand claims priority of use based on the registration, application, and first use dates.
- Actual consumer confusion is alleged as one of the reasons for cancellation.
- Bronx Native is accused of making knowingly false statements in their trademark application (Source: TTABVUE).
As this case is set for oral argument on December 13th, we would be interested to hear your opinion. Do you think these brand names are confusingly similar?
Stay tuned; we will announce the ruling once the TTAB has decided.
Trademark cancellation is a legal recourse for proprietors to protect their brand identity and uniqueness when faced with potential infringements.
This case offers several important lessons for businesses and trademark owners:
- It underscores the importance of having a strong, unique, and easily identifiable trademark. The TTAB found that THE BRONX BRAND and BRONX NATIVE were different enough to prevent consumer confusion, emphasizing the need for distinctiveness when choosing a trademark.
- The case highlights the importance of conducting thorough research before choosing a trademark. Knowing the landscape of existing brands can help businesses avoid potential disputes and legal challenges down the line.
- This case highlights the importance of filing your trademark application early before another brand begins using your brand identifiers.
- Lastly, the legal process involved in trademark cancellation can be complex and time-consuming. However, it’s necessary to safeguard intellectual property rights.
Navigating the intricacies of trademark law can be daunting, but you don’t have to do it alone.
At SecureMark Legal, our experienced team of legal professionals is ready to guide you through every step of the process, from initial research to trademark registration, and even dealing with disputes or cancellation proceedings if necessary.
Learn how we can help protect your brand and secure your business’s future.
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