Hunton Retail Law Resource

Trademarks allow businesses to protect brand names and logos used on their goods and/or services. Unlike other IP, rights in a registered trademark can last indefinitely as long as the mark is in continuous use and all the required maintenance documents are filed. Failure to file such documents results in the cancellation of the trademark registration. Once canceled, the mark can still be re-applied for by the original owner and, in certain instances, another enterprising business. Specifically, assuming the mark has been legally abandoned, the other enterprising business can file its own trademark registration application for the mark.

A recent case from the Trademark Trial and Appeal Board (TTAB) illustrates how the original owner can still have standing to oppose another business’s registration of a mark that’s remained dormant for over a decade. The marks-at-issue were the brand name “CINGULAR” in plain text and on an old CINGULAR logo, which were phased out by the original owner, AT&T Inc., in favor of its own name around 2007. In 2014, Dormitus Brands LLC filed its own trademark registration applications for the marks-at-issue. In response, AT&T filed an opposition at the TTAB. The TTAB bifurcated the proceeding into two phases, with the current phase dealing only with the issue of AT&T’s standing, i.e., whether AT&T had standing to oppose Dormitus’s trademark registration applications for the marks-at-issue.

AT&T argued that it had established standing based on, among other things, its interest in use of the term CINGULAR by its controlled subsidiary, New Cingular Wireless PCS, LLC (New Cingular), in its trade name.

Dormitus argued that AT&T had lacked standing because (1) AT&T abandoned the CINGULAR marks when it stopped using the mark after “making the switch” to its current name, AT&T; (2) AT&T’s CINGULAR registrations have expired; (3) New Cingular does business as AT&T Mobility and does not use its legal name (New Cingular Wireless PCS, LLC) except on formal legal documents (e.g., contracts and FCC tower leases and licenses); and (4) AT&T’s public-facing interactions are under the name AT&T Mobility.

The TTAB did not define “public” so narrowly. The TTAB held that the legal documents (e.g., contracts and FCC tower leases and licenses) at issue are in the wireless communications field, where AT&T and Dormitus are would-be competitors. Further, such legal documents would be viewed by those with whom New Cingular has entered into these agreements, such as professionals interested in the construction of cell towers as well as retail consumers purchasing cell phone wireless services. This showed that New Cingular conducts significant business in wireless communications using the trade name “New Cingular Wireless PCS, LLC” and, therefore, that New Cingular uses CINGULAR as part of its trade name, and that the trade name is known to the relevant public. Further, because AT&T provided proof of its corporate relationship to New Cingular, it established that it can reasonably believe that damage to New Cingular will naturally lead to financial injury to itself. As such, the TTAB held that AT&T had established its standing to pursue its claim.

This case is a good example of how businesses can look to uses of a “dormant” mark that are not traditionally known to be public facing in order to establish standing for opposing the registration of the mark by another entity.