In a recent decision, Corcamore, LLC v. SFM, LLC, 978 F.3d 1298 (Fed. Cir. 2020), the Court of Appeals for the Federal Circuit clarified the standard for maintaining a petition to cancel a trademark registration under §1064 of the Lanham Act.  The Federal Circuit noted that while these questions are often framed as questions of “standing,” they are “more appropriately viewed as requirements for establishing a statutory cause of action.” Id. at 1303.

In this case, the petitioner (SFM) owns a federal registration for SPROUTS for grocery store services, while the respondent (Corcamore) owned a federal trademark registration for SPROUT for use with vending machine services. In bringing its cancellation petition, SFM claimed that its rights were superior because of its purportedly earlier usage of the SPROUTS mark, and it further alleged that Corcamore’s SPROUT mark was injurious because it was “likely to cause confusion or mistake, or to deceive the purchasing public.”