Importance of timely response in trademark litigation

If you find yourself on the receiving end of trademark cancellation proceedings, it is important to know what response is expected in each step of the process and to meet these expectations timely and thoroughly. Failure to comply may result in the cancellation of your mark, which could have costly consequences for the name or logo in which you invested your time and money to build.

Take the “Goodyman” case for example. Mr. Benedict was granted U.S. trademark registration for the mark “G THE GOODYMAN” on July 12, 2005. However, on March 8, 2005, Super Bakery was granted U.S. trademark registration for the word mark “GOODY MAN.”  Both marks are registered in International Class 30, but Benedict specifies “cookies, cakes, tarts, rice cakes, strudels, and donuts” while Super Bakery specifies “bakery products, namely cupcakes.”

Super Baker filed a petition for cancellation with the TTAB of Benedict’s mark in 2007. Benedict elected to act pro se – to represent himself instead of hiring an attorney. During the discovery phase, Super Bakery requested certain documents, but Benedict failed to object or supply the requested documents. Super Bakery then filed a motion to compel discovery. Again, this motion went unopposed by the self-represented trademark owner, and so Super Bakery filed a motion for default judgment, with no response from Benedict.  As a result, the TTAB awarded Super Bakery a default judgment and cancelled Benedict’s mark.

Benedict attempted to appeal the TTAB’s decision, but the Federal Circuit sided with the TTAB’s ruling, its primary reason being that Benedict failed to comply with established procedures on several occasions. Despite being given numerous opportunities to respond to Super Bakery’s petition for cancellation, Benedict never even attempted to respond. Being a pro se applicant was not a viable defense for not following the proper procedures. The old adage is true – ignorance is no excuse under the law. You should engage an attorney if you are unfamiliar with the law and procedure. Not doing so can carry heavy consequences and ultimately cost significantly more in the long run. Benedict’s case highlights the importance of knowing your obligations and proper procedures in trademark litigation and following through with them.