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ARTICLE · 23 DECEMBER 2019

A Limitation In Your Trademark Application May Not Avoid A Refusal Based On A Prior Registration

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Critchley was granted a registration with this limitation.

United StatesIntellectual Property
William Borchard
William Borchard

In an attempt to avoid a refusal based on a prior registration of the same or a similar mark for identical or related goods or services, a limitation in your trademark application may be ineffective.

Recent cases demonstrate this.

1. Kicking Horse Coffee Co. Ltd. v. David John Critchley , Consolidated Opposition No. 91218282 & Cancellation No. 92059924 (T.T.A.B. February 28, 2019).

Before the current case was brought, a UK citizen named David John Critchley had applied to register KICK ASS as a trademark for clothing and various beverages including "energy drinks."  The Examining Attorney had refused registration because of a likelihood of confusion with a prior registration of KICK ASS for coffee owned by a Canadian company named Kicking Horse Coffee Co. Ltd.  The Trademark Trial and Appeal Board (TTAB) had affirmed the refusal, and Critchley had sought review by the U.S. District Court for the Eastern District of Virginia.  However, the U.S. Patent Office

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