Cancellation Order Clears Path for TM Registration
September 20, 2020 Attorney Walter B. Welsh and Welsh IP Law have secured an order from the Trademark Trial and Appeal Board (“TTAB”) cancelling two trademark registrations cited against their client’s applications to register the trademark JENKINS NEUROSPINE.
Welsh IP Law had applied to register the trademark JENKINS NEUROSPINE for its client in connection with medical and surgical services related to the spine and nervous system. The Trademark Office refused registration based on a likelihood of confusion with two senior registrations for JENKINS CLINIC for medical clinics, medical labs, and medical services.
Welsh IP Law Filed Petition to Cancel the Registrations.
Welsh IP Law initially sought to resolve the matter by seeking a coexistence agreement with the Jenkins Clinic. This approach made sense considering the differences in the services provided by the parties, namely neurology versus urology. The parties could not reach an agreement. Welsh IP Law then filed a petition with the TTAB to cancel the JENKINS CLINIC registrations. A cancellation petition initiates an administrative proceeding that allows a third party to challenge to the validity of a trademark registration. Cancellation proceedings can be effective when a senior trademark registration is blocking a later filed application and there are valid reasons to cancel or limit the registration. The Complaint filed by Welsh IP LAW sought cancellation of the JENKINS CLINIC registrations based on: (1) junior use, (2) trademark mutilation, (3) trademark abandonment, and (4) lack of interstate use.
The TTAB Issued a Judgment Cancelling the Registrations.
The TTAB subsequently issued a default judgment and granted the petition to cancel the JENKINS CLINIC registrations after the Jenkins Clinic failed to adequately respond to the Complaint. The judgment clears the path to approval and registration of the JENKINS NEUROSPINE trademarks.