Use in Commerce

News & Analysis as of

Hashtag Trademarks: #ItsAllAboutTheUse

Brand owners have embraced hashtags (words or phrases preceded by a hash or pound sign - #) as a way to both engage consumers and track social media posts regarding a specific product or topic. Not surprisingly, the...more

Federal Circuit: Lack of Bona Fide Intent to Use at the Time of Filing Fatal to Trademark Application

In a recent ruling the Federal Circuit affirmed the decision of the Trademark Trial and Appeal Board (TTAB) sustaining an opposition against a trademark application on the grounds that the applicant failed to prove that it...more

Walt Disney's TM Case Could be Heard by the Supreme Court

Back in February of 2014, Walt Disney Co. (“Disney”) successfully upheld its cancellation proceeding of a registration for a rival PLAYDOM mark on the grounds that the owner, David Couture (“Couture”), was not using the mark...more

Offering of Services Alone Insufficient Basis for § 1(a) Trademark Application - David Couture v. Playdom, Inc.

Addressing for the first time whether the offering of a service was sufficient “use in commerce” under the Lanham Act, the U.S. Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board’s (TTAB)...more

The U.S. Trademark Use Requirement and Associated Risks and Strategies for Chinese Applicants [Video]

I believe there is a misunderstanding as to what we mean when we say "use requirement" or what the trademark office means when they say "use requirement". The trademark use requirement in the United States is not evidence...more

Trademark Review | March 2015

Registration Cancelled Where Services Related to Mark Not Provided - Playdom, Inc. filed a petition to cancel Couture’s mark, arguing that the registration was void because Couture did not use the mark in commerce as of...more

Use of Service Marks in Commerce: Making Good on Your Promises

In order to register a service mark—a trademark used to promote and sell services, as opposed to goods—with the United States Patent and Trademark Office (USPTO), the owner of the service mark must be using the mark in...more

Couture v. Playdom, Inc. - USCA, Federal Circuit, March 2, 2015

U.S. Federal Circuit affirms TTAB’s decision canceling trademark registration, clarifying that service mark is “used in commerce” only when mark is both used or displayed in sale or advertising of services and services are...more

Advertising Alone Does Not Demonstrate Use of a Service Mark in Commerce for Purposes of Obtaining a Federal Registration

Here’s a common scenario: Your business has come up with an idea for a new service offering, and you or your marketing department has created the perfect brand for it. Now what? Because you have a great relationship...more

“Use It or Lose It”: Service Mark Registration Canceled When Application Supported Only by Advertising

On March 2, 2015, the U.S. Court of Appeals for the Federal Circuit issued its first-ever ruling addressing use requirements for registering service marks. The court held that offering a service, without the actual rendering...more

Federal Circuit Confirms That Advertising Services Is Not Use in Commerce

In Couture v. Playdom, Inc., the Federal Circuit held that the use of a mark on a website to offer services is not use in commerce sufficient to support an actual-use service mark application. As a result, the Court affirmed...more

Use it or Lose It: Abandoning Your Brand Can Have Dire Consequences

Trademark rights arise out of use in commerce, and can provide protection for your name, brand, and reputation in the community provided, that the marks are continuously used in connection with your goods or services. While...more

Anatomy of a Protectable Slogan: JE SUIS CHARLIE versus THIS SICK BEAT

In our 140-character world, slogans and rallying cries have become a popular shorthand to signify support for the emotion of the moment. As such slogans capture our national attention, it is virtually inevitable that the next...more

USPTO: Over Half of Applications/Declarations Studied Over-Claim Covered Goods/Services

It has been the practice of some brand owners to include more goods in a use-based trademark application or declaration than were actually being used. Under TTAB precedent such as Medinol v. Neuro Vasx, Inc., 67 USPQ2d 1205,...more

Oh What A Tangled WEB We Weave When First We…Try To Show Use

In order to get a trademark registered or maintain a registration, an example of use of the trademark (referred to by trademark nerds as a “specimen”) must be submitted to the US Trademark Office. Often trademark attorneys...more

Trademark Trial and Appeal Board Sustains Opposition on the Basis of Fraud

Nationstar Mortgage LLC v. Mujahid Ahmad - The United States Patent and Trademark Office (USPTO) Trademark Trial and Appeal Board (TTAB or Board) sustained an opposition on the basis of fraud, finding that Ahmad’s...more

Prior Art Redefined Under the AIA

The America Invents Act’s (“AIA’s”) overhaul of the U.S. Patent law system has significantly redefined what constitutes available prior art that can be used to reject patent applications or invalidate patents. Thanks to the...more

Monkey Selfie Redux

When we last examined the intellectual property issues raised by a self-portrait taken by a talented female Indonesian crested black macaque—popularly known as the “Monkey Selfie”—we concluded that there was unlikely to be...more

Markit to Market - May 2014

In This Issue: - Scammers Still Be...Scamming - Contests – Check Rules Before Offering! - Catalogs as Specimens - gTLD Sunrise Periods Now Open - Excerpt from Scammers Still Be...Scamming: Based...more

Catalogs as Specimens Showing Use in Commerce

As U.S trademark owners know, the U.S. is unique among jurisdictions in that those who wish to federally register their marks are required to show that they are using a mark “in commerce” in connection with the goods/services...more

United States Trade Secrets Law

The America Invents Act (AIA) changes the traditional calculus in determining whether to seek patenting an invention or to maintain it as a trade secret. This shift in intellectual property protection is the result of two...more

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