TTAB upholds ‘Naked’ TM on remand
The Trademark Trial and Appeal Board (TTAB) won’t cancel a contraceptive company’s “Naked” trademark for condoms despite hearing complaints from rival Australian Therapeutics Supplies.
The board issued its final decision on the case on Thursday, December 16, following its remand from the US Court of Appeals for the Federal Circuit.
Australian Therapeutics first started selling its “Naked” brand condoms in the US in April 2003. A few months later, US company Naked filed a US trademark application to register the “Naked” mark for condoms.
Australian Therapeutics alleged it had prior use of the “Naked” mark for condoms and petitioned the TTAB to cancel the trademark.
According to the final decision, Australian Therapeutics did not demonstrate that Naked’s trademark “falsely” suggests a connection with Australian Therapeutics’ own condom brand under Section 2(a)—a test of false suggestion of a connection.
The TTAB said: “Naked refers to petitioner’s condoms, not petitioner itself. Thus, consumers do not unmistakably associate Naked with petitioner, nor do consumers perceive Naked as pointing uniquely to petitioner.”
It also denied Australian Therapeutics cancellation on the grounds that Naked lacked bona fide intent to use the mark when it filed the application. The TTAB claimed that Naked’s witness testimony, alongside internal documents it had submitted as evidence was enough to establish bona fide intent.
Australian Therapeutics moved to strike portions of Naked witness Jud Ireland’s testimony, claiming that Naked’s pretrial disclosures failed to provide a list or summary of topics on which Ireland would testify and do not identify with any reasonable particularity the documents Ireland would introduce.
However, the TTAB decided to hear Ireland, who testified that Naked first used the “Naked” trademark on a commercial basis in 2007.
Remanded case
TTAB issued its initial decision on December 21, 2018, denying the petition for cancellation because Australian Therapeutics lacked standing or an entitlement to a cause of action.
Specifically, the board determined that the Australian company could not show an interest in the cancellation proceeding or a reasonable belief of damage as it had “contracted away” its proprietary rights in its unregistered marks.
Australian Therapeutics then appealed the decision to the US Court of Appeals for the Federal Circuit. The Federal Circuit reversed the board’s decision that the Australian company lacked entitlement to bring a statutory cause of action and remanded the case back to the TTAB in an opinion dated July 27, 2020.
The Federal Circuit said: “Because [Australian Therapeutics] has a real interest in the cancellation proceeding and a reasonable belief of damage, [Australian Therapeutics] satisfies the statutory requirements to seek cancellation of a registered trademark pursuant to § 1064. We reverse and remand.”
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