Celebrating a Legal Triumph: Vardhman Sancheti V. Bhupendra Tekwani DBA Artncraft, Trademark Trial and Appeal Board, USPTO (Cancellation No.92077340)

12th July, 2023 - 9:38 am Categories: Trademark 0 Comments

Introduction

Legal battles often shape the future of industries and serve as milestones for not just the individuals fighting for their rights but also for the future disputes to come. In the matter of Vardhman Sancheti v. Bhupendra Tekwani, DBA Artncraft[1], dated 05/06/2023 before the esteemed Trademark Trial and Appeal Board[2](hereinafter referred to as the “Appeal Board/TTAB”), a significant legal victory was achieved by the Petitioner Vardhman Sancheti. This legal battle was of paramount importance, as it paved the way to secure the righteous position of the Petitioner in the market. We shall delve into the details of the case, the legal principles deliberated upon, analysing the arguments presented by both parties and judgement in regards thereof.

Background

The Petitioner had been selling its goods in the US market bearing the trade mark ‘ARTNCRAFT’ prominently for ceramic knobs, tapestries, home furnishings and other kinds of handicrafts through E-commerce platforms like Amazon and other such websites since 2016 but did not seek registration of its mark.  The Respondent also started selling its similar goods under the identical mark ARTNCRAFT and also secured registration of its mark under U.S Trademark Registration 5708405 being used since March 8, 2017. Based upon its registration in the USA, the Respondent had issued a takedown notice to Amazon.com in 2019, alleging infringement of his trademark rights by Petitioner’s use of the ARTNCRAFT mark and consequently, the Petitioner’s listings on Amazon.com were removed, barring the Petitioner from posting his goods under the ARTNCRAFT mark causing him incalculable and irreparable damages. Upon knowledge of the existence of registration of an identical mark, the Petitioner filed a cancellation petition on 10/06/2021 against the registration for the standard character mark ‘ARTNCRAFT’ in the name of Mr. Bhupendra Tekwani vide Registration No. 5708405 applied for the goods namely “Accent furniture; Ceramic knobs and glass knobs; Ceramic pulls; Ceramic pulls for cabinets, drawers and furniture; Chair cushions; Chairs; Cushions; Drawer pulls of plastic or wood, cork, reed, cane, wicker, shell, amber, mother-of- pearl, meerschaum and substitutes for all these materials; Footstools; Furniture, namely, wardrobes; Glass pulls; Non-metal doorknobs; Non-metal knobs; Non-metal pulls; Pillows; Plastic knobs; Porcelain knobs; Porcelain pulls; Screws, not of metal; Stone pulls; Stone pulls for cabinets, drawers and furniture; Wood pulls, in International Class 20”,  based on likelihood of confusion with Petitioner’s prior used common law mark ‘ARTNCRAFT’ under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d)[3].

Arguments Presented

The main arguments of the Petitioner revolved around the identical nature of the Petitioner’s and Respondent’s mark in sight, sound, connotation, meaning, and overall commercial impression and regarding the identical or highly related nature of the goods covered under the Respondent’s mark to the goods dealt under the Petitioner’s mark ‘ARTNCRAFT’. Petitioner also presented cogent evidence in support of its common law use of the mark ‘ARTNCRAFT’, including deposition testimony and exhibits. It was argued that the Respondent had maliciously succeeded in barring the Petitioner from selling his goods bearing the mark ‘ARTNCRAFT’ on Amazon.com even though the Respondent was subsequent entrant in the market.

The Respondent, on the other hand, raised several contentions against Petitioner’s standing to make a claim as no trade mark application was filed which allegedly evidenced that the Petitioner had made no effort to protect his mark in any way. The Respondent also went ahead to claim that the Petitioner abandoned his mark as he undercut use of the ‘ARTNCRAFT’ mark in the United States market subsequent to 2019 upon the receipt of take-down notice from the Respondent.

Analysis

The Appeal Board was of the opinion that the Respondent made unpersuasive arguments against the Petitioner’s “standing to make a claim to the mark”. It was elucidated that Petitioner’s lack of trademark filings did not preclude him from claiming a statutory cause of action based on common law use and such interpretation amounts to incorrect characterization of law, as statutory entitlement to a claim under Section 2(d) can be based on common law use. The findings in Syngenta Crop Prot. Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1118 (TTAB 2009) and Giersch v. Scripps Networks, 90 USPQ2d at 1022 were relied upon to set foothold on the standing based on common law use. The Appeal Board also emphasized that Respondent himself admitted to the use of an identical mark by the Petitioner for overlapping goods and this suffices to show the Petitioner’s direct commercial interest to have a standing in the cause of action. Further, it was illuminated that though the Petitioner discontinued his use in U.S. after 2019, which was “occasioned by” enforcement activity of Respondent’s takedown, such 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 it is discernible that the Petitioner was not sleeping on his rights instead instituted a cancellation proceeding. While expounding on the issue of non-use the court threw light on the principle laid down in Penthouse Int’l, Ltd. v. Dyn Elecs., Inc., 196 USPQ 251, 257 (TTAB 1977) wherein it was cleared that non-use of a mark, pending the outcome of a party’s protest to such use, constitutes “excusable non-use” sufficient to overcome any inference of abandonment.

Judgment

The TTAB’s analysis delved into various DuPont[4] factors to determine the likelihood of confusion amongst consumers, including the similarity between the marks, the similarity of the goods and trade channel, conditions under which and buyers to whom sales are made and other factors. The Appeal Board evaluated the visual, phonetic, and conceptual similarities, considering the burstiness of the case, where the trademarks’ distinctiveness and context played a crucial role in the final ruling.

The Appeal Board clarified that it is not the priority in registration rather it is the priority in use which ought to be established in a likelihood of confusion claim under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d)3.

Based on the arguments advanced and evidence presented in corroboration thereof, the Appeal Board unambiguously concluded that there was a likelihood of confusion between Petitioner’s common law mark and Respondent’s registered mark and ruled in favour of the Petitioner by ordering for the cancellation of Respondent’s registration for the mark ‘ARTNCRAFT’ under Registration No. 5708405.

Way Forward

This case highlights the importance of demonstrating a cause of action in a cancellation proceeding and a reasonable belief of damage caused by the registration of a conflicting mark. It establishes that common law use of a mark is sufficient to initiate proceedings under Section 2(d). Additionally, it clarifies that the absence of trademark filings does not automatically negate a party’s entitlement to challenge a registration. Discontinued use of a mark in consequence of a pending outcome of an ongoing dispute was held to be “excusable non-use” if the party is continually defending its rights.

Petitioner’s legal victory stands as a testament to the significance of protecting intellectual property rights. This case showcases the meticulous analysis of trademarks, the implications of potential confusion, the superiority of prior user and the importance of defending one’s unique brand identity.

[1] https://ttabvue.uspto.gov/ttabvue/v?pno=92077340&pty=CAN&eno=1

[2] The Trademark Trial and Appeal Board (TTAB) handles appeals involving applications to register marks, appeals from expungement or re-examination proceedings involving registrations, and trial cases of various types involving applications or registrations.

[3] § 2 (15 U.S.C. § 1052) Trademarks registrable on the principal register; concurrent registration: No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

(d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; (2) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Use prior to the filing date of any pending application or a registration shall not be required when the owner of such application or registration consents to the grant of a concurrent registration to the applicant. Concurrent registrations may also be issued by the Director when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Director shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons.

[4] When courts are considering whether or not two trademarks (or applications) are “confusingly similar,” courts use anywhere from 7 to 13 factors in their analysis. The most referenced set of factors are the 13 “du Pont Factors” stemming from In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).

Author: Ancy Jacob and and Swati Agarwal, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.