Wednesday, June 07, 2023

TTAB Grants ARTNCRAFT Cancellation Petition: Respondent's Amazon Take-Down Notice Excused Petitioner's Subsequent Nonuse

The Board granted a petition to cancel a registration for the mark ARTNCRAFT for, inter alia, ceramic knobs and pulls, finding confusion likely with petitioner's identical, prior-used common law mark for overlapping goods. Respondent claimed that petitioner abandoned his mark through nonuse for a period of three years, beginning in 2019. But the Board found the nonuse excusable because it resulted from respondent's Amazon take-down notice. Vardhman Sancheti v. Bhupendra Tekwani DBA Artncraft, Cancellation No. 92077340 (June 5, 2023) [not precedential] (Opinion by Judge Cynthia C. Lynch).

In April 2019, respondent sent a Take-Down Notice to stating that petitioner's use of the mark ARTNCRAFT was an infringement of its registered trademark rights, and demanding removal of petitioner's goods from Amazon complied, and the petitioner has been barred from posting his goods on Amazon. 

The Board sided with petitioner:

Even though Petitioner discontinued his use in the U.S. in 2019, 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 this cancellation proceeding. *** Petitioner’s testimony and Respondent’s admission regarding Respondent’s enforcement activity against Petitioner suggest that Petitioner was justified in postponing his use of the mark pending the outcome of this proceeding.

The Board concluded that petitioner’s use "has been sufficiently ongoing and consistent to satisfy his burden of proof of priority." From there it was a hop, skip, and jump to a finding of likelihood of confusion.

And so, the Board granted the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: Perhaps the respondent should have done some investigation before sending that take-down notice.

Text Copyright John L. Welch 2023.


At 12:21 PM, Blogger TMAttorneyHeller said...

I agree with your recommendation to the Respondent!!


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