Failure to conduct a proper trademark clearance search can cause significant legal issues for a trademark owner at some point in the future. It is our practice to continually reiterate and encourage our clients to take the time to conduct a proper full U.S. trademark search before filing an application with the United States Patent & Trademark Office (“USPTO”). A recent case from the Trademark Trial and Appeal Board (“TTAB” or the “Board”) illustrates why this due diligence is so important to a trademark owner. See Daniel P. Matthews v. Black Clouds, Cancellation No. 92058978 (TTAB July 31, 2015).
On April 8, 2014, the Petitioner based on his common law rights in the mark THE BLACK CLOUDS for audio and video recordings via hard media and for streaming and downloading digital music, petitioned the TTAB to cancel a registration for the mark BLACK CLOUDS. The registration for BLACK CLOUDS, among other goods, identified audio and video recordings featuring music and artistic recordings. Petitioner claimed priority of rights and likelihood of confusion.
The Petitioner made a motion for summary judgment. This type of motion is made pretrial and it is intended to prove to the Board that there is no genuine dispute of material fact. The party filing a summary judgment motion is hoping to dispose of the matter early in the proceedings. The burden falls on the moving party to meet a certain level of proof and if met, the onus shifts to the respondent to demonstrate that there are facts in genuine dispute that must be resolved at trial. In this case the petitioner had to prove that it had priority rights in the mark THE BLACK CLOUDS and that use of the marks simultaneously would be likely to cause confusion, mistake or deceive consumers.