On October 27, 2020, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a Trademark Trial and Appeal Board (”TTAB”) decision that SFM was entitled to bring and maintain a petition under 35 U.S.C. § 1064.
SFM owns U.S. trademark registrations for the mark SPROUTS to be used with retail grocery store services. SFM filed a petition to cancel Corcamore”™s mark SPROUT for use with vending machine services alleging a likelihood of consumer confusion.
The TTAB relied on Empresa Cubana del Tabaco v. General Cigar Co., 753 F.3d 1270 (Fed. Cir. 2014) to deny Corcamore”™s motion to dismiss the cancellation petition for lack of standing as the TTAB concluded SFM had standing due to its real interest in the cancellation proceeding and a reasonable belief of damage caused by the SPROUT mark continuing to be registered.
Corcamore appealed that the TTAB erred in applying Empresea Cubana rather than following the analytical framework established in Lexmark International, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014) for determining whether the requirements for maintaining a statutory cause of action have been satisfied.
The CAFC agreed with Corcamore that Lexmark”™s ”analytical framework is the applicable standard for determining whether a person is eligible under § 1064 to bring a petition for the cancellation of a trademark registration” and explained that the Supreme Court in Lexmark established a party is entitled to bring a statutory cause of action if it demonstrates ”(i) an interest falling within the zone of interests protected by the statute and (ii) proximate causation.” Thus, the CAFC concluded the Lexmark analytical framework applies to § 1064.
Although the TTAB applied the standard of Empresa Cubana rather than Lexmark, the CAFC asserted there was ”no meaningful, substantive difference between the analytical frameworks expressed in Lexmark and Empresa Cubana”; therefore, the TTAB still reached the correct result.
The Corcamore decision appears to show that Lexmark”™s analytical framework that a party is entitled to bring a statutory cause of action if it demonstrates (i) an interest falling within the zone of interests protected by the statute and (ii) proximate causation, and that this is the applicable standard for determining whether a person is eligible under § 1064 to bring a petition for the cancellation of a trademark registration.