Use in Commerce

News & Analysis as of

More Than Zero: Under the Lanham Act, One Interstate Sale Qualifies as Actual Use of a Trademark in Commerce

In 2009, the U.S. Patent and Trademark Office rejected shoe manufacturer Adidas’s application to trademark the phrase “ADIZERO,” due to a likelihood of confusion with an existing mark: “ADD A ZERO,” a clothing trademark held...more

“Use in Commerce”: Look Before You Leap

Order Granting Motion to Dismiss, With Leave to Amend, Stag’s Leap Wine Cellars, LLC, et al. v. Treasury Wine Estates Americas Co., 16-cv-04922-RS (Judge Richard Seeborg) - Plaintiffs in trademark cases may be tempted to...more

Back to Basics: Trademarks – Part 3

Have you used your mark in commerce and what is the impact of that? If you are already selling your product or service with the mark on it, you are “using” your mark in commerce. As a result, you will need to provide...more

Is Your Intent-to-Use Trademark Application Vulnerable?

A common misunderstanding about trademark law involves what is actually necessary in order to “own” a trademark. There are a number of requirements that many companies miss if the company doesn’t do its research or hire an...more

Such a Nasty Trademark

After the last presidential debate, the Republican nominee’s “such a nasty woman” utterance led to somewhat of a rallying cry. Within minutes, #Nastywoman was trending across social media, and streaming of Janet Jackson’s...more

Trade-Marks in Canada: Proper Use and Maintenance

Proper usage is essential to protecting and maintaining valuable rights in trade-marks. The general rule is ‘use it or lose it’: unless a trade-mark is actually used continuously in connection with products or services,...more

A new NHL team: The Las Vegas Silver (or Desert) (or Golden) Knights

Have you heard about the NHL’s newest, not-yet-fully-named hockey team, based in Las Vegas? Although the team’s inaugural season will not begin until October 2017, season tickets have already sold out. This exciting news was...more

Trademarks, Service Marks, and Trade Dress: Key Facts and Pitfalls to Avoid

1. The Difference Between a Trademark, Service Mark, and Trade Dress. A trademark is any word, term, phase, symbol, logo, design, shape, tag line, background, color, scent, sound, device, or combination thereof that...more

Ninth Circuit Revives Trader Joe’s Federal Trademark Claims Brought In Washington Against “Pirate Joe’s” Operating In Canada

In Trader Joe’s Company v. Michael Norman Hallatt, the Ninth Circuit recently found that Trader Joe’s allegations of infringing conduct occurring within Canada supported a cognizable claim under the Lanham Act....more

Litigation Alert: The Ninth Circuit Leaves Pirate Joe’s Saying “Shiver Me Timbers!”

Late last week, the U.S. Court of Appeals for the Ninth Circuit determined a court had jurisdiction to decide a trademark lawsuit filed by a U.S. grocery store against a Canadian reseller where the products at issue were only...more

Maintaining Your Trademark Registrations-Part 2

Once you have obtained a U.S federal trademark registration, you must take certain steps to maintain the registration or else you risk losing your trademark protection. In this article, we discuss a key step in maintaining...more

Trademark Red Tape: Post-Registration Proof Pilot To Go Permanent

USPTO Red TapeRegular readers of the Trademark and Copyright Law Blog and our Trademark Red Tape™ column may recall our previous report on a pilot study by the United States Patent & Trademark Office (PTO) about...more

Trademark Review | June 2016

Coca-Cola has Acquired Secondary Meaning in ZERO for Colas - In an opposition proceeding before the TTAB, Royal Crown (RC) and Dr. Pepper/Seven Up sought to prevent registration of seventeen applications filed by...more

Trademark applicant’s Twitter account not service mark use for social media services

Florists’ Transworld Delivery, Inc. (“Florists”) filed an application to register their SAY IT YOUR WAY trademark in Class 35 and in Class 42 for “[c]reating an on-line community for registered users to participate in...more

Trademark Review | May 2016

Surname Not Registrable Absent Substantially Exclusive Use - As a result of various third-party uses of the surname “Ayoub” for similar services, Applicant’s use of AYOUB did not meet the requirement of Section (f) that...more

Gibson Guitar Corp. v. Viacom International, Inc. (USCA, Ninth Circuit, February 19, 2016)

Ninth Circuit affirms district court's dismissal of SpongeBob SquarePants trademark suit against Viacom but revives claims against U.K.-based defendant on grounds that question of whether product was used in commerce in U.S....more

Missed Connections: Seeking The Girl on the Train, Found Girl on a Train

The Wall Street Journal recently reported the spike in e-book sales of Alison Waines' two-year-old novel, Girl on a Train. The cause? Apparently, some customers thought they were purchasing The New York Times' best seller...more

Trademark Review | November 2015

I AM Similar - The Trademark Trial and Appeal Board (TTAB) affirmed the examiner’s decision to deny three applications for “I AM” marks filed by i.am.symbolic, LLC (“Applicant”), finding that Applicant’s proposed “I AM”...more

BUY NOW: Use in Commerce for Mobile Applications

For a mobile application developer, clearing the Apple® App Store's® often lengthy approval process and seeing the mobile application available for purchase may seem like the last necessary step to establish use of the name...more

MarkIt to MarketTM - October 2015

The October issue of Sterne Kessler's MarkIt to MarketTM newsletter discusses use in commerce as applied to mobile applications and services, outlines best practices for ensuring your business owns artwork and textual works...more

Conflicting State and Federal Laws May Result in Crippling Blows to Business in the Marijuana Industry

As of October 2015, four states have legalized marijuana for recreational use: Alaska, Colorado, Oregon and Washington. The recreational marijuana movement—although slow in terms of states following by legalizing use—has had...more

Summary of Recent Precedential Trademark Trial and Appeal Board Decisions

From June through August 2015, the Trademark Trial & Appeal Board issued eleven precedential decisions. Over the course of the upcoming weeks, we are briefly summarizing each opinion and a “take away” for brand owners and...more

IP Law Tracker Docket Review

Each month, we review significant intellectual property decisions from the U.S. Court of Appeals for the Sixth Circuit and the U.S. District Courts for the Eastern District and Western District of Michigan. Below is the...more

Trademark Review | August 2015

The Redskins Lose Again (Off the Field)- A federal District Court affirmed the Trademark Trial and Appeal Board’s (TTAB) ruling that “Redskins” cannot be registered as a trademark for use in connection with a...more

Intellectual Property and Technology News - Issue 27 Q3 2015

In This Issue: How Private is That Connected Car? US v EU Among the fastest growing sectors in the industry of smart things is the connected car. No longer a simple way from point A to point B, cars now...more

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