Many consumer product brands seek to enroll in online enforcement programs, for example, Amazon Brand Registry and eBay VeRO. These consumer product brands often experience online infringement and counterfeiting issues, so recording their registered trademarks with brand registries and participating in an online enforcement program can help with identifying infringements and streamlining the takedown process.

Regardless of whether brand owners of registered trademarks utilize online enforcement programs or simply submit takedown notices on e-commerce sites, they should not forget about prior common law users. Some trademark registrants appear to not have searched for prior trademark users whose rights in the U.S. are based on use, not registration. Just because you have a trademark registration to get into a brand registry program doesn’t mean you have the right to trump prior common law users.

In one recent Trademark Trial and Appeal Board case, Vardhman Sancheti v. Bhupendra Tekwani DBA Artncraft, Cancellation No. 92077340 (June 5, 2023), a common law user of the mark ARTNCRAFT successfully petitioned to cancel a registration for ARTNCRAFT based on its prior common law trademark rights. The registrant’s defense was that the common law petitioner had not used its ARTNCRAFT mark for a period of three years and thus abandoned the mark. The defense failed, however, because the petitioner’s nonuse was excusable – the petitioner was prevented from selling its goods on Amazon because the registrant had submitted a takedown notice claiming that petitioner was infringing its registered trademark.

As aptly summarized by the Board, “[e]ven though Petitioner discontinued his use …, where discontinued use is ‘occasioned by’ enforcement activity such as Respondent’s takedown, the discontinuation of use does not reflect an ‘intent to abandon the mark,’ particularly where the aggrieved party engages in ‘vigorous efforts’ to defend itself, as Petitioner has done here by instituting this cancellation proceeding.”

This case demonstrates the need, sometimes, to resist sending the cease and desist. Brand owners must always remember to investigate priority before submitting takedown notices of products sold under U.S. common law trademark rights.

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