9-Year-Old Registered Marks Cancelled in Opposition Proceeding Filed by AutoZone

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Yes, trademark registrations can be cancelled.

Trademark registrations can actually be cancelled for a number of different reasons, and this article deals with one of those reasons in particular which was recently highlighted in a case involving AutoZone: cancellation due to an opposition proceeding filed by a pre-existing trademark owner.

AutoZone’s Trademarks

AutoZone obtained its first registered trademark in 1988. Since that time, it has obtained thirteen (13) more federally registered marks for its AutoZone name alone, with its most recent registration being obtained in 2009. Not surprisingly, AutoZone’s trademark registrations cover, among other things, “retail automobile parts and accessories store services,” and “automotive repair services, namely, testing, repair, diagnosis and installation of automotive parts and accessories.”

Dent Zone’s Trademarks

Dent Zone is a provider of vehicle repair and maintenance services that has been in business since the mid-1990s, and it first obtained a federal registration for its trademark in 2002.

AutoZone’s Trademark Enforcement Efforts

In 2005,* AutoZone filed a proceeding with the USPTO’s Trademark Trial and Appeal Board (TTAB) seeking cancellation of Dent Zone’s trademarks on the grounds that they created a likelihood of confusion (the test for trademark infringement) with AutoZone’s pre-existing registered marks. While Dent Zone opposed AutoZone’s claims, its arguments were no match for AutoZone’s, and the TTAB ordered cancellation of Dent Zone’s three trademark registrations in due course.

Specifically, the TTAB held that the parties’ respective registered marks—despite their obvious differences—were sufficiently similar in commercial impression to raise the issue of likelihood of confusion. The fact that the products and services sold by both parties overlapped significantly was also a major factor. The TTAB discounted Dent Zone’s evidence of (i) numerous other “Zone” trademarks, and (ii) lack of actual confusion amongst consumers, and instead relied on the famousness of AutoZone’s trademarks to find that Dent Zone’s trademarks interfered with AutoZone’s exclusive trademark rights.

Lessons Learned

This case should serve as an important lesson to trademark owners in the positions of both parties to the case.

For smaller companies like Dent Zone, it is critical to perform thorough clearance research and weigh the potential practical implications of selecting a trademark that could potentially be considered to interfere with a more famous trademark owner’s rights. As this case shows, even if you are able to squeeze a trademark registration application through, this does not guarantee that you will be safe in using your trademark.

For companies with famous trademarks like AutoZone, it is well worth the investment and effort to enforce your exclusive trademark rights. Whether though cease-and-desist demands, opposition proceedings, or cancellation proceedings, enforcing your trademark rights is the only way to maintain legal exclusivity. While the USPTO often denies registration applications for new trademarks on likelihood-of-confusion grounds, you cannot rely on the USPTO exclusively to keep tabs on new trademarks in the marketplace. An effective and efficient brand monitoring strategy is critical to maintaining the value of your trademarks.

*Why AutoZone waited until 2005 to file the action—and why AutoZone did not oppose Dent Zone’s trademark registration application while it was pending—is unclear.

Jeff Fabian assists business owners in protecting their brands so that they can stay focused on running their businesses. Visit www.fabianip.com for more information, and follow Jeff on Twitter @FabianOnIP.

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