Trademark Trial and Appeal Board Grants Keats Gatien’s Petition to Cancel CYCLESTAR Trademark Registration


 

The Decision

On September 20, 2019, the Trademark Trial and Appeal Board of the United States Patent and Trademark Office reviewed a reverse-word likelihood of confusion case and granted the Petition to Cancel the trademark registration for CYCLESTAR held by CBIP, LLC (d/b/a CycleBar) filed by Keats Gatien client, Starcycle Franchise, LLC, based on its senior rights to the STARCYCLE mark. See, Starcycle Franchise, LLC v. CBIP, LLC, (Can. No. 92063406).*

Why it is Important

This case involved a three-year dispute at the TTAB between a female-owned, start-up indoor cycling business founded in Lake Oswego, Oregon in 2013 and a national fitness chain doing business under the CycleBar brand. After Starcycle registered its STARCYCLE mark for fitness instruction, CycleBar file a trademark application for its CYCLESTAR mark for fitness instruction. CycleBar received an Office Action refusing registration of its mark based on a likelihood of confusion with the STARCYCLE mark. CycleBar overcame the refusal and was granted a registration. Starcycle became aware of the registration and filed a Petition to Cancel the CYCLESTAR mark after CycleBar refused to voluntarily surrender the registration. In issuing the decision in Starcycle’s favor, the Board rejected CycleBar’s argument that the transposed marks, CYCLESTAR vs. STARCYCLE, created a “distinctly different commercial impression” from Starcycle’s mark.

What Rights Holders Should Do

Rights owners should order trademark watch services to routinely review new trademark applications filed in the United States (or abroad depending on their scope of use) to identify potential infringements and attempt to resolve disputes at the earliest possible time. In addition, when clearing a mark prior to use or registration, brand owners should be sure to review reverse- word combinations and obtain an opinion as to whether the transposition of the terms contained in any marks identified in their review creates a distinctly different commercial impression, so they may avoid potential liability for trademark infringement.