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Articles

Avoiding Trademark Pitfalls in the "Land of the Unlimited Possibilities"

International Trademark Association
July/August 2008

Heavner, B. Brett

Article

Authored by B. Brett Heavner and Marcus H.H. Luepke

INTRODUCTION

U.S. trademark law is fundamentally based on common law and thus differs considerably from the trademark laws in other countries. These differences can make it difficult for foreign applicants for U.S. trademark registrations to adopt an effective approach to U.S. trademark protection. Understanding the basic tenets of U.S. trademark law and practice will give foreign applicants an advantage, while failing to learn them or ignoring them can prove to be costly and time consuming. This article highlights the 15 most common mistakes that are made by foreign applicants for U.S. trademark registration and presents practical solutions for avoiding these 15 pitfalls. The mistakes are listed in the order in which they usually occur during the U.S. trademark registration process—from the selection of a trademark to its enforcement.

1. Misunderstanding the Principle of Priority in the United States
Under U.S. trademark law, being the first to file an application to register a trademark1 does not guaranty priority to the applicant. In general, under U.S. common law it is the date on which a mark was first used by its owner in the United States that decides the right of priority, irrespective of whether the mark is ever registered in the U.S. Trademark Office. Unlike other jurisdictions, mere use of an unregistered common law mark in the United States gives the user territorial priority trademark rights even without requiring a certain level of notoriety. Such earlier use establishes a right of priority even over a later-filed U.S. application to register a similar mark if the first use of the mark of the application was commenced after the prior first use of the unregistered common law mark.2

There is, however, one statutory method for establishing priority trademark rights in the United States before use of a mark in U.S. commerce3 commences. Since 1989, the U.S. priority concept has been based on a combination of the common law's first-in-time, first-in-right principle, and a first-to-file principle. The filing date of an application to register a mark on the Principal Register of the U.S. Trademark Office now constitutes "constructive use" of the mark, conferring a right of priority, nationwide in effect, that takes precedent over a later date of actual first common law use, provided that the registration application matures into a registration. Section 7(c) of the U.S. Trademark (Lanham) Act, 15 U.S.C. § 1057(c), defines this core "first to file" tenet of U.S. Trademark Law as follows:

Contingent on the registration of a mark on the principal register provided by this chapter, the filing of the application to register such mark shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect, on or in connection with the goods or services specified in the registration against any other person except for a person whose mark has not been abandoned and who, prior to such filing—

(1) has used the mark;

(2) has filed an application to register the mark which is pending or has resulted in registration of the mark; or

(3) has filed a foreign application to register the mark on the basis of which he or she has acquired a right of priority, and timely files an application under section 44(d) [§ 1126(d)] of this title to register the mark which is pending or has resulted in registration of the mark.

Thus, a foreign applicant must not limit its U.S. clearance searching to just similar marks that are registered or are pending registration in the U.S. Trademark Office, but must also encompass unregistered common law marks currently used in the United States. Foreign applicants accustomed to operating in a "first-to-file" country frequently learn this lesson through a painful experience when applying to register marks in the United States without the advice of U.S. trademark counsel. For example, foreign applicants sometimes adopt a mark knowing it was already in use in the United States by another party under the mistaken belief that the mark must be registered with the U.S. Trademark Office for that party to have trademark rights. After confirming that the other party had failed to apply for a registration, these foreign applicants commonly believe that they are safe to launch their product in the United States by being the first to apply for a U.S. registration.

Unfortunately, such foreign applicants often receive cease and desist letters from the prior user and only then learn that they cannot successfully rely upon their application filing date due to the other party's prior common law use, and must therefore cease use of their mark in the United States. Under U.S. trademark law, actual knowledge of another party's prior use can even lead to claims for willful trademark infringement and liability for treble damages.4 Other foreign applicants hope to save their applications by pointing out that the prior common law use was limited to a small and/or remote geographical area within the United States. However, because a U.S. Registration covers the entire United States,5 the foreign applicant's nationwide constructive use under Section 7(c) of the U.S. Trademark Act would overlap with any other party's actual areas of prior use in the United States. So, the fact that the prior common law use is geographically minimal and/or remote does not solve the prior common law use problem for the foreign applicant.

 

2. Misunderstanding Distinctiveness Under U.S. Law
When selecting a new mark, it is crucial to make well informed choices. One key question is always whether the mark will be immediately protectable and registrable. In the United States, marks that are generic as applied to the goods or services they are intended to identify are never protectable or registrable as trademarks,6 Marks that are deemed to be merely descriptive of the goods or services they are intended to identify lack the required distinctiveness for immediate protectability or registration.7 Whereas generic marks are never registrable, descriptive marks that are already in use in the United States may be immediately registered on the Supplemental Register of the U.S. Trademark Office, if they are deemed capable of becoming distinctive.8 At a later point, provided they have acquired distinctiveness (also known in the United States as "secondary meaning"), merely descriptive marks may also be registered on the Principal Register of the U.S. Trademark Office.9

On the other hand, so-called suggestive marks, which are marks that are only suggestive of the goods and services they identify, are considered to be inherently distinctive and thus immediately protectable and registrable.10 While the dichotomy between descriptive and suggestive marks appears to be similar to the laws in many other countries, the difference between the two in the United States lies in the detail, namely, where the line is drawn between merely descriptive marks and suggestive marks.11 A descriptive mark immediately describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services; it immediately tells something about the goods or services.12 In contrast, suggestive marks are those that require imagination, thought or perception to reach a conclusion as to the nature of the goods or services.13

This suggestive/descriptive dichotomy can require the drawing of fine lines and often involves a good measure of subjective judgment, in particular, when marks are composed of several elements or words. According to the practice of the U.S. Trademark Office and the U.S. Trademark Trial and Appeal Board (TTAB), it is sufficient for registration purposes if the mark is created in an unusual way that requires consumers to use their imagination to understand its meaning in relation to the covered products.14 Incongruous juxtapositions that do not really make sense when applied to the relevant goods and services are considered to be suggestive rather than descriptive.15 For example, the term SNO-RAKE was held not to be merely descriptive of a snow removal hand tool because a rake in its classic understanding would—due to its prongs—not be a useful tool to remove snow.16 Thus, nobody would seriously ask another person to "rake snow," and, therefore, competitors do not need to use this term to describe a snow removal tool.17

This shows that foreign applicants in the United States have a significant chance to overcome initial refusals to register based on descriptiveness of their marks if they can reasonably argue that the mark is structured in an unusual way that does not directly and meaningfully describe the goods or services for which registration is being sought. The likelihood of obtaining a U.S. registration for such marks might thus be higher than it would be in other jurisdictions.

3. Insufficient Searching and Evaluation
Determining the availability of a new mark for problem-free use in the United States is the next key step in the adoption of a new mark. It is crucial in this process to perform the appropriate searches to provide complete information on all potential obstacles to unfettered use of the mark in the United States. It often makes sense to start with a knock-out or screening search of the Principal and Supplemental Registers of the U.S. Trademark Office to eliminate prior registered marks as being clearly unavailable marks. Particularly when global use of a new mark is intended, such a search can be helpful to the decision on the global adoption and use of the mark. However, such preliminary searching is definitely not a sufficient basis for determining whether a mark is available for adoption and use in the United States. These preliminary search results may not identify non-identical but similar marks, nor will they identify prior common law rights in marks that are not registered. Limiting the search to active registrations in the U.S. Trademark Office is also dangerous. It can result in missing relevant continuing common law rights in marks that have not been abandoned and are thus still enforceable, even though their U.S. registrations have been abandoned or cancelled. If the foreign applicant wishes to use globally a uniform mark rather than be forced to adopt a different mark in the United States due to prior common law or registered trademark rights in the United States, a comprehensive U.S. availability search is mandatory.

It is also important that a U.S. trademark practitioner not only design the search instructions, but also review the search results, rather than having them analyzed by a non-U.S. in-house or outside counsel. This not only avoids the risk of overlooking prior common law marks and/or misjudging the likelihood of confusion analysis, but it also provides a detailed outside counsel's opinion that will help to defend against a possible claim for willful trademark infringement.18 Such a claim is based on the infringer's adoption of the mark despite its awareness of a potentially conflicting mark. If the outside counsel's opinion letter states in sufficient detail why the relevant mark should not be an obstacle to adoption and use, the infringer may waive the attorney-client privilege protecting such opinion and rely on the counsel's evaluation that it would not infringe the third party's mark in mitigation of a claim of willfulness and to thereby avoid the increased damages.19 While reliance on the advice of counsel and on a search for competing marks may be a factor supporting a finding of good faith,20 a short email message from its in-house counsel clearing the mark should be insufficient to defend against willfulness infringement.21

It is also dangerous to consider a similar domain name as being irrelevant only because the search report does not reveal a corresponding trademark registration or application. It is necessary to investigate further into whether the domain name registrant also owns prior common law trademark rights in the domain name; if it uses the domain name as a trademark, the resulting common law rights can be as perfect a basis for an infringement claim as a registration for that mark would have been.22

4. Inconsistent Ownership in Trademark Registrations
International companies with U.S. affiliates and subsidiaries sometimes choose to have one of their U.S. subsidiaries file the U.S. application in the subsidiary's own name. In some cases, the local subsidiaries file the U.S. application without the knowledge of the parent company. Such scenarios may present a challenge for internationally active companies, for they can lead to globally inconsistent protection strategies and endanger successful enforcement of the trademarks on an international scale. Global enforcement of a mark owned by a hodge-podge of different local subsidiaries, rather than ownership in the parent, can be difficult as it will be necessary to prove a relationship between all of the different local owners of the mark.23 Such proof can be much more difficult and time consuming, and may also create the burden of including multiple plaintiffs into a complaint. For this reason alone, it is usually the best solution to select one entity to own all trademark registrations world-wide, often the name of the parent company or—for tax reasons—a holding company. The more stringent use and licensing requirements under U.S. law provide a further important reason to designate as the applicant either the parent company or the entity that actually uses the mark.24

In cases of related companies, the owner of a U.S. application can run into serious problems if it files the application and it is neither the parent company nor the subsidiary using the mark in the U.S. An application based on use in commerce must be filed by the party who owns the mark on the filing date of the application, and if the applicant does not own the mark on the application filing date, the application is void.25 So, if the subsidiary applying for a trademark registration is a sister company of the subsidiary that is exclusively using the mark, it must grant a license to its using subsidiary and disclose these facts in its application.26 License agreements can only be implied between a using entity and its parent company—because they are considered to have "unity of control" under U.S. trademark law.27 There is, however, no assumption of a license between sister companies, as they are not regarded as having such unity of control.28 If the applicant is not in a position to evidence that it actually exercised the required control over the nature and quality of the goods or services on which its sister company uses the mark, then the application can be held void ab initio, and the registration can be cancelled.29

5. Overly Broad Descriptions of Goods and Services in an Application
Overly broad descriptions of goods and services in U.S. applications are relatively common among foreign applicants because they are often accustomed to the practice in their home countries of permissively crafting the description of goods and services as extensively as possible to obtain a broader scope of protection. For a Paris Convention or Madrid Protocol applicant, only, no use in the United States is required to obtain a U.S. registration.30

In many foreign countries, during the initial period of registration, lasting usually 3 or 5 years, non-use has no negative consequences, and such broad coverages of goods and services can function as a nice deterrent to others who may intend to adopt a confusingly similar mark during that period. Even after that initial period, in most countries a partial cancellation of goods and/or services from a registration is the most serious consequence a registrant has to fear if the mark has not been used on all the goods after the first 3 or 5 years.

Not so in the United States, where an overly broad specification of goods and services can lead to the cancellation of the entire U.S. registration.31 From the beginning of the application process, the applicant for a U.S. trademark registration—whether it is a foreigner or a domestic applicant—must have a bona fide intent to use the mark in U.S. commerce on all listed goods and services.32 This requirement is particularly relevant for all U.S. applications that are not based on use in U.S. commerce at the time of filing. In the case of an application based on an intent-to-use the mark in U.S. commerce, commencing use, a prerequisite to the issuance of a U.S. registration for all but Paris Convention or Madrid Protocol applicants, can be delayed for a maximum of 3 years from the issuance by the US Trademark Office of a notice of allowance, which may mean 3-1/2 to 4 years from the application filing date, depending upon how quickly the mark becomes approved for registration by the U.S. Trademark Office.

This bona fide intent to use the mark in U.S. commerce must exist and be attested to by oaths or declarations accompanied by specimens of use (1) before a U.S. registration will issue for all but Paris Convention or Madrid Protocol applicants;33 (2) before the six-year anniversary date of the U.S. registration;34 and (3) with every ten-year renewal of the registration.35 Lack of this intent to use can be a basis for an attack on the validity of the application and any registration issuing thereon by a third party.36 While in most cases it will be difficult to prove the absence of the applicant's intent to use the mark of the application, there are situations when this can be accomplished. These are cases in which the applicant's business, its marketing plans or product development materials do not show any indication that it ever intended to produce or distribute some of the products that are listed in the application.37 The more extensively the Identifications of good and services is drawn and the more remote the listed goods and services are from the usual business of the applicant, the more likely such an attack will be successful.

A broad identification of goods and services is also more likely to trigger an initial refusal to register by the U.S. Trademark Office. An Examining Attorney will definitely issue a refusal to register if the application designates only International Class headings (because they are considered as too vague and therefore not acceptable).38 Broad identifications also make it more likely that the registration will be refused due to perceived likelihood of confusion conflicts with prior registrations of similar marks covering goods and services that are identical to or closely related to those listed in the registration application.39 Because the U.S. trademark registration system considers relative grounds for refusing a registration during the examination process, third party rights can prevent a registration before an opposition is ever filed by the owner of a similar registered trademark.40

6. Failure to Delete Unused Goods or Services in Any Statements of Use Can Be Fatal to a U.S. Registration
Inaccurate material statements, oaths or declarations of use can lead to the cancellation of a U.S. registration if, for example, it is falsely indicated that a mark is in use on a good or a service when in fact it is not, and that fact was known or should have been known to the applicant.41 While the U.S. Trademark Office will normally have no reason to doubt the veracity of a statement of use, a third party can rely on a misstatement of use to defend itself against an opposition, a petition for cancellation of a registration, or a trademark infringement claim by aggressively attacking a registration claiming it was obtained by a fraud perpetrated on the U.S. Trademark Office. Under Medinol Ltd. v. Neuro Vasx, Inc.42 and its progeny, the TTAB considers a false material statement that a mark is in use on all of the identified goods or services, when it was in fact only in use on some of them, to be fraud on the U.S. Trademark Office and the TTAB will cancel the entire registration. The Medinol decision is particularly relevant for foreign applicants who are unaccustomed to a use-based registration system. First, foreign applicants, especially those filing for a U.S. registration under the Madrid Protocol or the Paris Convention, often carry forward the broad specifications of goods and services that were accepted by foreign trademark offices. Such foreign owners of a U.S. registration must, when a statement of use is to be filed, carefully review the listed goods and services in its U.S. registration to ensure that the identification of good and service therein only includes those goods and services for which the mark is actually in use in the United States. This is crucial to eliminate the possibility that a third party can successfully challenge the validity of the entire registration and have it in its entirety canceled.

Second, and perhaps even more important, is the fact that the TTAB does not limit the finding of fraud on the U.S. Trademark Office to cases in which a declarant had an actual intent to commit fraud, or even had direct knowledge that a statement of use was incorrect. Instead, the TTAB has found fraud when the declarant "should have known" that its statement to the U.S. Trademark Office was false or misleading. Today, inadvertence, an honest misunderstanding, or negligent omissions will no longer save the registrant from the draconian sanction of losing its entire registration. How dangerous this can be for foreign applicants was showcased in the 2007 decision in Hurley International LLC v. Volta.43 There, the Australian owners of the U.S. registration were not allowed the defense that they believed their statements of use were true, that they did not understand the legal meaning of the phrase "use in commerce" as defined in the U.S. Trademark Act, and that they honestly believed that use in Australia and on the Internet would constitute the required use in the United States. The TTAB held that the wording of the standard statement of use is so clear and unambiguous that an actual misunderstanding is unlikely, and that an applicant has a duty to investigate the situation before signing a declaration of use.

Even in cases where the applicant's native language is not English, and the legal system in its home country differs from the U.S. system, misunderstanding the meaning of terms describing specific obligations or legal requirements in the United States will not save the applicant.44

While it might seem acceptable that the applicant overlooks a few items in a very long list of goods or services, an extensive list of identified goods and services alone is no excuse; the failure to delete 100 unused goods or services out of a total 150 can and is likely to be considered as being the result of at least reckless disregard.45 Also, a later amendment to delete those goods or services that are not in use will not necessarily remedy or cure the fraud, even if the amendment is filed before fraud is claimed by the other side.46 Only those amendments to correct the mistake that are filed prior to the mark's publication can prevent a finding of fraud.47 These aspects show that foreign applicants and registrants particularly need to pay close attention to ensure that their identifications of goods and services in the United States only contains those goods and services for which the mark is in actual use in the United States, and that they must continuously monitor the status of their mark's use.

7. Delaying the Filing of the Registration Application
In most cases, applications for a new U.S. trademark registration are filed as soon as the U.S. search results have been evaluated and the mark is determined to be available for adoption, use and registration in the United States. Sometimes, however, the potential applicant delays filing because it is not sure whether the mark will be used in the United States, or which of several alternative marks will become the company's ultimate choice for the United States. The prospective applicant might still be looking for an investor or awaiting consumer testing results on the various options. Waiting for months or even years after the initial clearance of a mark is risky, and can ultimately result in higher costs than those associated with immediately filing one or more trademark applications. The search results will quickly lose their relevance because a third party may obtain rights in an identical or a confusingly similar mark between the search results status date and the time when the first application is filed. Therefore, it is highly recommended to perform an updated search when the initial search gets stale, which usually happens after about 2-3 months.

This is not much different from other jurisdictions, but with the exception that a third party merely starting to use an identical or confusingly similar mark in the United States before the filing of the first application will destroy the claim to priority of the belated application. Depending on the classes that need to be covered, filing one or more applications and obtaining the earliest nationwide common law priority date through the constructive provisions of the U.S. Trademark Act48 is not only the safer option, but might also be the more cost-effective and prudent solution.

8. Inappropriate Signatures on the U.S. Application
The U.S. application must be signed by a person who can either legally bind the applicant, or who has first hand knowledge of the recited facts and the authority to act on behalf of the applicant, or it can be signed by an authorized U.S. attorney.49 While foreign applicants may be tempted out of mere convenience to have their U.S. trademark counsel sign the application, this convenience could backfire on the applicant. The U.S. trademark counsel does not usually have personal knowledge of the relevant facts that must be averred and must therefore rely on the information received from the foreign applicant. More importantly, by signing the application's declaration, the attorney may become a fact witness as to the averments made and thereby be disqualified from representing the applicant as trademark counsel if the validity of the application or any resulting registration is ever challenged. This creates the necessity of choosing a new U.S. trademark counsel for such proceedings, which will result in additional time and costs to familiarize a new U.S. trademark counsel with the history of the dispute. It is a far better practice to simply have the foreign applicant sign the required declaration of the U.S. application.

9. Submitting Insufficient Specimens of Use
The U.S. Trademark Office requires the filing of specimens of use of the mark as it is actually used in U.S. commerce on or in connection with the identified goods or services at the following times: (a) at the time of filing a use-based U.S. application, (b) when filing a statement of use before or after the issuance of a notice of allowance in an intent-to-use-based U.S. application, (c) by the six-year anniversary date of a U.S. registration, and (d) with every ten-year renewal of a U.S. registration. While only one specimen of use is required for each class of goods or services identified in the application or registration, this should not be misunderstood as lowering the very strict use in U.S. commerce standard detailed above. Actual use in U.S. commerce must exist for each and every identified good and service. Whether a specimen of use is acceptable to show actual use of the mark in U.S. commerce depends on whether goods or services are identified.

For goods, labels attached to the goods or appearing on the goods' commercial packaging are usually acceptable.50 Advertising related to the goods, however, is not acceptable as a specimen of use on goods, unless it is point-of-sale material.51 Thus, the following materials are not sufficient specimens of use for goods: advertising circulars and brochures, price lists, announcements, publicity releases, listings in trade directories, and business cards.52 Catalogs or websites displaying the goods, on the other hand, are acceptable—if they show the mark sufficiently close to the picture of the goods and include the necessary order information, (e.g., an order form, or a phone number, mailing address, or email address for placing order).53 Specimens of use for computer programs, video tapes, or movies can be photographs of a display screen projecting the trademark identifying the computer program, video, or movie, or photographs of a frame of a movie or video tape bearing the mark.54 For downloadable computer software, specimens showing use of the mark on an Internet web site are acceptable, but only if the web site provides sufficient information to enable the user to download the software from the website; if the website simply advertises the software without providing a way to download it, it is unacceptable as a specimen of use in U.S. commerce.55

For services, a specimen of use must show the mark as actually used in the sale or advertising of the services, and the services being offered must be described on the specimens.56 Acceptable specimens of use include newspaper and magazine advertisements, signage, brochures, billboards, handbills, direct-mail leaflets, menus (for restaurants), and the like; however, printer's proofs for advertisements, publicity releases to news media, or printed articles resulting from such releases, are not accepted, because they do not show use of the mark by the applicant in the sale or advertising of the services in U.S. commerce.57 Business documents, such as letterhead and invoices, may be acceptable service mark specimens of use if they show the mark and also refer to the relevant services.58

10. Failure to Make Use of the Supplemental Register
The Supplemental Register of the U.S. Trademark Office is an important alternative register to the Principal Register for marks that are already in use in U.S. commerce, and that are not inherently distinctive of the goods or services they identify, but that are capable of becoming distinctive and functioning as trademarks or service marks (usually by acquiring distinctiveness, also known as acquiring secondary meaning, through use). Although an application for registration on the Supplemental Register is an implied admission that the term is not inherently distinctive,59 and though a registration on the Supplemental Register is not entitled to any of the statutory presumptions of validity and ownership, or of the constructive use rights of Section 7(c), or the prima facie evidence benefits afforded to a registration on the Principal Register of the U.S. Trademark Office,60 registrations on the Supplemental Register provide the following valuable benefits:

  • They can constitute a bar to the subsequent registration of an identical or confusingly similar mark;61
  • They serve an important defensive purpose in that others conducting trademark searches for the same or a similar mark can locate the registration in a search and will be put on actual notice of the mark;
  • The owner of a Supplemental Register registration can use the registration symbol “®” in association with the mark;62 and
  • The owner of a Supplemental Register registration can sue for infringements in the U.S. federal courts, and may recover treble damages.63

Registering a mark on the Supplemental Register does not preclude the right to register the mark on the Principal Register when the mark becomes eligible. If the mark has been in use in U.S. commerce and has been promoted to such an extent that the relevant purchasing public has come to associate the goods or services bearing the mark with a single source (acquired distinctiveness), it may be possible to obtain a registration on the Principal Register. The U.S. Trademark Office may accept as prima facie evidence of a mark's acquired distinctiveness an affidavit or declaration of the applicant attesting to its five years of substantially continuous and exclusive use as a mark to qualify the mark for registration on the Principal Register.64 However, it may still be necessary to submit actual evidence of acquired distinctiveness, such as sales figures, advertising expenditures, advertising and promotional materials, and evidence of consumer recognition of the mark, including consumer affidavits and surveys.65

It is worth noting that when an application pending registration on the Principal Register is amended to seek registration on the Supplemental Register, the date when the amendment to the Supplemental Register is made becomes the new effective filing date of the application.66 This means that any third-party applications for the same or confusingly similar marks that were filed between the original filing date of the application for registration on the Principal Register and the amendment of the application to the Supplemental Register could constitute a bar to the registration of the mark on the Supplemental Register. This is not necessarily a big risk because only marks that are in use in U.S. commerce may be registered on the Supplemental Register.67 Thus, the actual date of first use in U.S. commerce will give the applicant separate common law rights that will be helpful against potential third party rights. However, if the original application was based upon an intent-to-use the mark in U.S. commerce rather than on an actual use in U.S. commerce at the time of filing, an amendment to the Supplemental Register will not be possible until an amendment to allege use or a statement of use has been filed in the application.68

11. Being Unprepared for Oppositions, Petitions to Cancel, or Litigation
Contentious inter-party proceedings in the United States can be very time consuming and very expensive. These characteristics apply not only to full-blown infringement litigation in U.S. courts, but also to administrative oppositions to registration and petitions for cancellation of registrations that are heard in the U.S. Trademark Office. The latter proceedings are actually like abbreviated litigations in court rather than being simple administrative proceedings. Depending on the complexity of the case, the motions filed, and the amount of discovery and testimony entered in the case, the costs of either oppositions to registration or petitions for cancellation of a registration through completion may be up to US $500,000.

Oppositions to registration and petitions for cancellation proceedings consist of five distinct phases. The answer period usually allows the applicant or registrant 40 days to respond to the written notice of opposition or petition for cancellation.69 A discovery period is set for 180 days, during which time the parties can file requests for oral or written depositions, written interrogatories, written production of documents and things, and written requests for admissions.70 Responses to all of these various discovery requests are initially due within 30 days, but these periods are extendable by the parties or upon motion.71 After this pre-trial period, a trial phase starts with set periods for entering written testimony into the trial record by both parties. After a period for rebuttal testimony, the opposing or petitioning party has 60 days to file its main trial brief in which it may discuss the main facts, make its principal case arguments and rebut its adversary's anticipated arguments.72 The applicant or registrant then has 30 days after the due date of the opposer's or petitioner's main trial brief to file its own trial brief, to which the opposer or petitioner may reply within 15 days.73 The last phase is the period of oral arguments before the TTAB, during which both parties make their oral arguments before the TTAB. Oral arguments, however, are optional and will only be scheduled if either party so requests in writing.74

One aspect of U.S. litigation that is unfamiliar to many foreign trademark owners is deposition testimony. A deposition is a witness statement taken orally or upon written questions, under oath, for use in a court or in the TTAB. Depositions may take place during the discovery process to explore what a witness knows, and they may be used as a substitute for live testimony during a trial by the deposing party. Unless the parties agree otherwise, the TTAB will not order a natural person residing in a foreign country to come to the United States for the taking of his or her deposition during the discovery phase of a proceeding.75 There may be a different rule, however, with respect to testimony requested during the trial phase.

Recently, a U.S. appellate court ordered a foreign applicant to appear in the United States to give trial testimony in a trademark opposition.76 In that case, the U.S. court of appeals enforced a subpoena issued by a federal court in Virginia that ordered a Portuguese applicant to appear in the United States to give trial testimony in an opposition, which was filed against the Portuguese applicant's U.S. trademark application. The Portuguese applicant had appointed a U.S. representative as part of the TTAB proceeding, and the subpoena was served on the representative in the United States. The court held that this was valid service on the Portuguese applicant, and the court ordered the Portuguese applicant to appear for the deposition or face a sanction, which could include the TTAB accepting the opposer's allegations as fact, since the Portuguese was not offering deposition testimony to rebut the allegations. This decision has been very controversial and many commentators believe that it may be overturned.77 At this time, however, the decision remains a valid precedent, so there is a greater chance now of a foreign applicant being ordered to appear in the United States to defend an application in person.

As it is in U.S. court litigation, it is also in opposition and cancellation proceedings always important to rebut the other side's allegations, because neither judges nor the TTAB have any power to investigate the parties' claims. Timely responses to all discovery requests are also crucial, as extensions of time are limited. Ignoring the discovery phase or failing to select and prepare the appropriate trial phase witnesses can be a costly and sometimes fatal mistake. Indeed, failure to respond to discovery requests can lead to sanctions that include a determination of the opposition or cancellation proceeding against the non-responding party.78

12. Risk of Abandonment Due to Failure to Use the Mark
As indicated above, the obligation to use a mark in U.S. commerce begins at the latest when a mark is registered in the U.S. Trademark Office. Only U.S. trademark applications that are based upon prior foreign registration or that are filed as Madrid Protocol extensions do not require the proof of use in U.S. commerce prior to the issuance of a U.S. registration. Once the obligation to use a mark in U.S. commerce begins upon the issuance of all U.S. registrations, all marks are treated similarly, and a significant period of non-use of a mark makes its Registration vulnerable to cancellation. If the mark has not been used in U.S. commerce for a three-year consecutive period, that is prima facie evidence that the mark has been abandoned in the United States.79 The owner of a mark can rebut the prima facie evidence of abandonment if it can show that it had the subjective intention to resume use of the mark, such as by proffering its negotiations with a potential new U.S. distributor.80 However, use of the mark in other countries, or use on or in connection with goods or services other than those for which the mark is registered in the United States is irrelevant, and such evidence will not help rebut the prima facie evidence of abandonment of the mark and its U.S. registration, or for those specific goods and services for which the mark is registered but has not been in use for any three-year three-consecutive period.81

A U.S. appellate court decision recently held that use of a mark in foreign countries alone, even if the mark is famous there, cannot support the inference that the owner intended to resume use of the mark in the United States.82 The owners of the U.S. trademark registrations for the mark BUKHARA were internationally running several restaurants under this same mark, but had closed their last BUKHARA restaurant in the United States in 1997; and since then, the owners had not used this mark for restaurant services in any U.S. location.83

The Indian owners raised without success several grounds as "justification" for the suspended use of the BUKHARA mark in the United States, and as inferences of their intent always to resume use of the mark in the United States cited the following: Indian regulations hindering profitability of foreign restaurants; their attempts to determine locations for possible future U.S. restaurants; their sales of packaged foods under the BUKHARA mark in the United States; and their continued use of the BUKHARA mark outside the United States.84 The U.S. appellate court considered the foreign regulations requiring the return of U.S. profits to the foreign country irrelevant, because the registrant did not prove that these regulations were the reason for the lack of use of the BUKHARA mark in the United States.85 The marketing plans and marketing efforts were held insufficient evidence of an intent to resume use in the United States, because they were of a more general nature and did not specifically target the U.S. market.86 The U.S. appellate court further regarded the sales of packaged foods to be insufficient evidence of an intent to resume use, not only because the relevant goods were different from the registered restaurant services, but also because such use only started after a three-year period of non-use, and therefore after prima facie abandonment had occurred.87 This shows that restarting use of the mark of an abandoned registration after a three-year consecutive period of nonuse cannot heal abandonment if the intent to resume use is not shown to have existed within that three-year period. While such "fresh" use may create new trademark rights, the earlier claim to priority and the U.S. registration will be lost. This decision confirms the strict standard and the heavy burden imposed on a foreign U.S. registrant when it raises its intent to resume use of the mark against a prima facie abandonment.88

 

13. Missed Maintenance Filings
Maintenance of a U.S. registration requires more than a mere payment of renewal fees. Since the requirement to continuously use a mark in U.S. commerce accompanies the mark's U.S. registration over its entire life, the registrant needs to file declarations of use several times over its entire life. A single failure to timely file one of the required declarations of use can and will result in an involuntary cancellation of the U.S. registration by the U.S. Trademark Office.89 While non-use may be excused in certain situations, such exceptions are granted only under narrow circumstances; merely unfavorable economic conditions or decreased demand for the products do not qualify as excuses.90 Instead, demonstrating a trade embargo, illness, fire or other catastrophes and circumstances out of the owner's control are required.91

The first declaration of use in U.S. commerce after the issuance of a U.S. registration, the "Declaration of Continued Use Under Section 8," must be filed between the fifth- and sixth-year anniversary of the issuance date of the U.S. registration.92 Thereafter, a Declaration of Continued Use Under Section 8 must be made with every 10-year renewal of the U.S. registration under Section 9.93 These deadlines are noted in the U.S. registration certificate issued by the United States Trademark Office, but the U.S. Trademark Office does not send out any notifications or reminders of the deadlines. It is therefore crucial to pay close attention to these deadlines. Although in some situations there is a subsequent 6-month grace period to provide the required declaration of use, it is incumbent on the registrant alone to take note of this ultimate opportunity to avoid cancellation.94

Equally important is the fact that declarations of use must be filed by the owner of the mark.95 If the incorrect entity files a declaration of use, such error can only be corrected by the end of the applicable grace period.96 Afterwards, the registration will be cancelled without any opportunity to correct the error.97

14. "Naked" Licensing Can Result in Loss of the Registration
The requirements for a trademark license to be valid are higher in the United States than they are in many other countries. The main difference is that the trademark licensor in the United States must, by statute, exercise sufficient control and supervision over the nature and quality of the goods or services to which the mark is applied by its licensee.98 If the licensor fails to exercise such control, the license may be considered a "naked" license and that may lead to an abandonment of rights in the mark and its registration.99 A licensor's failure to control the quality of the licensed goods means that the licensee is no longer a "related company" to the licensor, and the mark therefore no longer identifies the licensor as the single "source" of goods offered under the mark; and in that event, the mark no longer functions as a trademark, and the licensor can lose its exclusive right to the mark and thus its U.S. registration.100

To avoid this drastic consequence, the owner of the mark needs to set quality standards in any license agreement and also to include a licensor's right to control these standards. The agreement should therefore also list the ways in which such control is exercised, usually by regular inspection of samples and/or the manufacturing site. However, including these rights and standards in the license agreement is still not enough: the licensor must actually review and enforce these standards.101 Certainly, it should always be in the trademark owner's interest to make sure that the licensee's use does not reflect negatively on the licensor's reputation. However, failure to comply with the duty to enforce the quality standards can not only impact the trademark owner's reputation, but can under U.S. law also result in a loss of the trademark and its U.S. registration.

15. Failure to Police the Mark
Policing marks is crucial for successful protection. Having all of a client's relevant trademarks registered in the United States may feel comforting. However, this alone does not suffice. Late enforcement of these rights—or even the entire lack of enforcement—can result in a total loss of the trademark rights, or limit them considerably. The "laches doctrine" will prevent effective trademark enforcement if the owner waits unreasonably long to take action after learning about an infringement.102 Similarly, not opposing the registration application of another's mark, and thereafter waiting more than 5 years to petition to cancel the resulting U.S. registration can result in the loss of the grounds needed to prevail that were otherwise available to cancel the registration in its first 5 years of existence.103

Not pursuing all possibilities to prevent the use and/or registration of identical or confusingly similar marks can harm a mark in two other fundamental ways. First, it can dilute the mark's distinctiveness. This can be the case when there are too many highly similar marks in any field. Second, a generic use of the mark by others can eventually destroy the mark's ability to function as a trademark if the public does likewise. Such process, known as "genericide," will result in a loss of all trademark rights, as has happened to the once proprietary trademarks THERMOS,104 ASPIRIN (in the United States),105 and CELLOPHANE,106 when these marks were adopted by the public as generic names of these novel goods.107

Because proactive enforcement is so important, learning early about potential infringements and conflicting uses of marks is the key. The trademark owner should encourage its employees to report any possible infringements to management. Being the closest to the market and being most familiar with the owner's products, their input is highly valuable and the least expensive. Equally important is having a formal watch service that detects and reports all new applications filed with registrations issued by the U.S. Trademark Office, and that detects and reports domain names registered and common law uses of the same or similar marks. Because mere use of a mark is sufficient to establish protectable trademark rights in the United States, such common law marks should be evaluated just like marks that are registered in the U.S. Trademark Office. A simple search on the GOOGLE search engine is a helpful tool to reveal some relevant third party common law uses of the same marks. A more detailed common law search through a commercial U.S. search firm, as suggested for clearing a mark for adoption, use and registration, will give a more comprehensive picture of similar marks. However, acquiring knowledge about relevant conflicting marks will start the laches doctrine clock running, as discussed above. The foreign trademark owner should therefore be ready to take action within a reasonable period of time after learning of the potential infringement to avoid being barred from claiming rights at a later time.

CONCLUSION

Foreign applicants and registrants face many challenges in protecting trademarks and their registrations in the United States, and now more than ever as foreign applicant's encounter the pitfalls created by the highly touted simplicity of using the Madrid Protocol to extend international registrations to cover the United States and its territories. Under these circumstances, U.S. trademark counsel can assist in ensuring that the Madrid Protocol system is smartly applied and that it actually helps foreign trademark owners make use of the Madrid Protocol's advantages while avoiding the dangers related to U.S. extensions discussed above. The convenience of one central application system should not cause foreign applicants to overlook the fact that the use-based system of trademark law in the United States has peculiar requirements, and particularly with respect to the use of the mark in U.S. commerce, the ignorance of which can result in loss of trademark rights and U.S. registrations.

Consulting with U.S. trademark counsel about U.S. extensions under the Madrid Protocol—preferably prior to filing the Madrid Protocol application, and at the latest when receiving a provisional refusal to register or a notice of acceptance from the U.S. Trademark Office—would help foreign trademark owners bypass these risks.

Last, in working with U.S. trademark counsel, it is important to request a detailed report letter listing all U.S. registration requirements, and to internally maintain a docketing system—especially for the U.S. extensions under the Madrid Protocol—separate and apart from the docketing of the central Madrid Protocol registration.

Incorporating the foregoing tips on how to avoid the 15 most common pitfalls in U.S. trademark practice should provide good guidance to the foreign trademark owners in navigating U.S. trademark law requirements, and help foreign applicants to move swiftly and error free toward the successful protection of their marks in the United States, the "Land of the Unlimited Possibilities."

Endnotes
1 The term "application" hereinafter refers to an application for registration of a mark filed in the U.S. Trademark Office, and the term "applicant" refers to the owner of the application.

 

2 See 15 U.S.C. § 1057(c).

 

3 Unless otherwise stated, the term "use" will hereinafter refer to "use in commerce" as defined in the U.S. Trademark (Lanham) Act, 15 U.S.C. § 1127.

 

4 See Bear U.S.A., Inc. v. A.J. Sheepskin & Leather Outerwear, Inc., 38 U.S.P.Q. 2d 1640, 1649 (S.D.N.Y. 1995).

5 See 15 U.S.C. § 1057(b).

6 See 15 U.S.C. § 1064(3).

7 15 U.S.C. § 1052(e)(1).

8 15 U.S.C. § 1091(a).

9 The U.S. Trademark Act provides for the registration of trademarks on either the Principal or Supplemental Registers. The Principal Register is designed for arbitrary and suggestive terms that do not merely describe the nature, character, or function of the goods or services with which they are used, and for merely descriptive terms that have become distinctive of the goods or services through extensive use. The Supplemental Register is designed for marks that, although merely descriptive of the goods or services with which they are used, are nonetheless capable of functioning as trademarks or service marks if they become distinctive as a result of use. 15 U.S.C. § 1091.

10 See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 11:4 (4th ed. 2004) [hereinafter McCarthy].

11 See In re Morton-Norwich Prods., Inc., 209 U.S.P.Q. 791 (T.T.A.B. 1981) holding that any doubt as to whether a mark is merely descriptive or suggestive is resolved in favor of the applicant by allowing publication of the mark for opposition; see also In re George Weston Ltd., 228 U.S.P.Q. 57, 58 (T.T.A.B. 1985) stating that the distinction between descriptive and suggestive marks is often made on an intuitive basis rather than as a result of precisely logical analysis susceptible of articulation; 2 McCarthy, supra note 10, § 11:51, speaks of a "nebulous line" between these two categories of marks.

12 See Stix Prods., Inc. v. United Merchants & Mfrs., Inc., 160 U.S.P.Q. 777 (S.D.N.Y. 1968); see also In re Bed & Breakfast Registry, 229 U.S.P.Q. 818 (Fed. Cir. 1987) .

13 See, e.g., Sport Supply Group, Inc v. Columbia Casualty Co., 335 F.3d 453, 466 (5th Cir. 2003).

14 See, e.g., In re Colonial Stores, Inc., 157 U.S.P.Q. 382, 384 (C.C.P.A. 1968).

15 See, e.g., In re Sharky's Drygoods Co., 23 U.S.P.Q. 2d 1061, 1062 (T.T.A.B. 1992).

16 See, e.g., In re Shutts, 217 U.S.P.Q. 363 (T.T.A.B. 1983) (SNO-RAKE ).

17 See id. at 364.

18 See, e.g., Lang v. Retirement Living Publ'g Co., Inc., 21 U.S.P.Q. 2d 1041, 1047 (2d Cir. 1991); Breuer Elec. Mfg. Co. v. Hoover Co., 48 U.S.P.Q. 2d 1705, 1716 (N.D. Ill. 1998).

19 Cf. Breuer Elec. Mfg. Co. v. Hoover Co., 48 U.S.P.Q. 2d 1705, 1716 (N.D. Ill. 1998), in which the alleged infringer successfully relied on counsel's trademark search and opinion.

20 See, e.g., Lang v. Retirement Living Publ'g Co., Inc., 21 U.S.P.Q. 2d 1041, 1047 (2d Cir. 1991); Bear U.S.A., Inc. v. A.J. Sheepskin & Leather Outerwear, Inc., 38 U.S.P.Q. 2d 1640, 1649 (S.D.N.Y. 1995);

21 See, e.g., Bear U.S.A., Inc. v. A.J. Sheepskin & Leather Outerwear, Inc., 38 U.S.P.Q. 2d 1640, 1649 (S.D.N.Y. 1995) in which was found that a superficial opinion letter without analysis explaining the conclusion and without documentation of search results cannot negate bad faith; lack of any searching may also be considered relevant to the issue of bad faith and willfulness. See also First Jewellery Co. of Canada, Inc. v. Internet Shopping Network LLC, 53 U.S.P.Q. 2d 1838 (S.D.N.Y. 2002).

22 See Brookfield Communications, Inc. v. West Coast Entm't Corp., 50 U.S.P.Q. 2d 1545, 1555-56 (9th Cir. 1999), in which the court indicated that a domain name can function as a trademark but in the end denied trademark rights merely based on a domain name registration; see also the USPTO's Examination Guide No. 2-99 on "Marks Composed, in whole or in Part, of Domain Names," September 29, 1999, and U.S. Trademark Office's Trademark Manual of Examining Procedure (TMEP) § 1215.02.

23 See, e.g., In re Pharmacia, Inc., 2 U.S.P.Q. 2d 1882 (T.T.A.B. 1987); Greyhound Corp. v. Armour Life Ins. Co., 214 U.S.P.Q. 473 (T.T.A.B. 1982).

24 See, e.g., 2 McCarthy § 16:37; In re Wells A.G., 787 F.2d 1549, (Fed. Cir. 1986) (Nies J. Concurring). But see INTA Emerging Issues Tax Comm., Report on Holding Company Case Law in the United States (Oct. 2005); see also Lanning Bryer and Matthew Asbell, Combining Trademarks in a Jointly Owned IP Holding Company, 98 TMR 834 (2008).

25 TMEP § 1201.02(b), referring to 37 C.F.R. § 2.71(d) and Huang v. Tzu Wei Chen Food Co. Ltd., 849 F.2d 1458 (Fed. Cir. 1988).

26 TMEP § 1201.03(a), referring to Pease Woodwork Co., Inc. v. Ready Hung Door Co., Inc., 103 U.S.P.Q. 240 (Comm'r Pats. 1954).

27 See In re Wella A.G., 5 U.S.P.Q. 2d 1359, 1361 (T.T.A.B. 1987).

28 Great Seats, Ltd. v. Great Seats, Inc., 84 U.S.P.Q. 2d 1235 (T.T.A.B. 2007).

29 Barcamerica Int'l USA Trust v. Tyfield Imps., Inc., 289 F.3d 589, 62 U.S.P.Q. 2d 1673, 1678 (9th Cir. 2002).

30 15 U.S.C. § 1126(e); 15 U.S.C. §§ 1141f(a), 1141h(a)(3), 1141i(b).

31 See, e.g., L.C. Licensing, Inc. v. Berman, 86 U.S.P.Q. 2d 1883, 1891-92 (T.T.A.B. 2008); see also Medinol Ltd. v. Neuro Vasx, Inc., 67 U.S.P.Q. 2d 1205, 1209 (T.T.A.B. 2003) and under Mistake 6, infra, for the parallel problem of overly broad declarations of use.

32 15 U.S.C. § 1051(b)(3)(B); 15 U.S.C. § 1126(d)(2); 15 U.S.C. § 1126(e).

33 15 U.S.C. § 1126(e); 15 U.S.C. §§ 1141f(a), 1141h(a)(3), 1141i(b).

34 15 U.S.C. § 1058(a).

35 15 U.S.C. § 1058(b); see also Mistake 6, infra.

36 See Commodore Elec. Ltd. v. CBM Kabushiki Kaisha, 26 U.S.P.Q. 2d 1503, 1507 (T.T.A.B. 1993).

37 See, e.g., L.C. Licensing, Inc. v. Berman, 86 U.S.P.Q. 2d 1883, 1891-92 (T.T.A.B. 2008); Commodore Elec. Ltd. v. CBM Kabushiki Kaisha, 26 U.S.P.Q. 2d 1503, 1507 (T.T.A.B. 1993).

38 Cf. TMEP § 1402.02.

39 15 U.S.C. § 1052(d).

40 Id.

41 Medinol Ltd. v. Neuro Vasx, Inc., 67 U.S.P.Q. 2d 1205, 1209 (T.T.A.B. 2003).

42 Id.

43 Hurley Int'l LLC v. Volta, 82 U.S.P.Q. 2d 1339 (T.T.A.B. 2007).

44 See Orion Elec. Co., Ltd. v. Orion Elec. Co., Ltd., 2004 WL 624762, Opposition No. 91121807, T.T.A.B. March 19, 2004 (the applicants were Korean).

45 See, e.g., J.E.M. Int'l Inc. v. Happy Rompers Creations Corp., 74 U.S.P.Q. 2d 1526 (T.T.A.B. 2005).

46 Hurley, 82 U.S.P.Q. 2d at 1346.

47 Id. at 1344 in dictum, referring to Universal Overall Co. v. Stonecutter Mills Corp., 154 U.S.P.Q. 104 (C.C.P.A. 1967); see also Grand Canyon West Ranch LLC v. Hualapai Tribe, 78 U.S.P.Q. 2d 1696 (T.T.A.B. 2006); in a precedential decision, the TTAB held that where the identification of goods in a trademark application is amended prior to publication, the applicant is entitled to "a rebuttable presumption that [the applicant] lacked the willful intent to deceive the Office." University Games Corp. v. 20Q.net, Inc., Opposition Nos. 91168142, 91170668, T.T.A.B. May 2, 2008.

48 15 U.S.C. § 1057(c), see text following note 3, supra.

49 See 37 C.F.R. § 2.33(a); TMEP § 804.04.

50 TMEP § 904.03(a) and (c).

51 In re Marriott, 173 U.S.P.Q. 799 (C.C.P.A. 1972).

52 TMEP § 904.04(b); In re Shipley Co., 230 U.S.P.Q. 691, 694 (T.T.A.B. 1986).

53 TMEP § 904.03(h); Lands' End, Inc. v. Manbeck, 24 U.S.P.Q. 2d 1314 (E.D. Va. 1992).

54 TMEP § 904.03(e).

55 Id.

56 TMEP § 1301.04.

57 Id.

58 See In re Adair, 45 U.S.P.Q. 2d 1211 (T.T.A.B. 1997), in which Christmas tree tags bore the trademark but did not indicate the kind of services.

59 3 McCarthy, supra note 10, § 19:43.

60 See 15 U.S.C. § 1094.

61 See 15 U.S.C. §§ 1052(d) and 1092.

62 15 U.S.C. § 1111; 3 McCarthy, supra note 10, § 19:37.

63 3 McCarthy, supra note 10, § 19:37; 15 U.S.C. § 1094 in combination with §§ 1114 and 1117.

64 15 U.S.C. § 1052(f).

65 TMEP § 1212.06(b), (c), and (d).

66 Cf. 3 McCarthy, supra note 10, § 19:42.

67 Furthermore, the original filing date may be considered for priority purposes if the application as originally filed was sufficient for registration on the Supplemental Register, 3 McCarthy, supra note 10, § 19:42.

68 3 McCarthy, supra note 10, § 2.47.

69 Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 310.03(a).

70 TBMP § 403.01.

71 TBMP § 403.03 and § 403.04.

72 TBMP § 801.02(a).

73 TBMP §§ 801.02(b) and 801.02(c).

74 TBMP § 802.01.

75 TBMP § 404.03(b).

76 Rosenruist-Gestao E Servicos LDA v. Virgin Enters. Ltd., 85 U.S.P.Q. 2d 1385 (4th Cir. 2007).

77 See John L. Welch and Ann Lamport Hammitte, Unfriendly Shores? Recent Developments in U.S. Law May Trouble Foreign Trademark Owners, 9 Allen's Trademark Digest 1, 3-4; see also Ryan Gile, Portugal-Based Rosenruist-Gestao Files U.S. Supreme Court Cert. Petition on Fourth Circuit's Decision to Enforce 35 U.S.C. § 24 Subpoena, Las Vegas Trademark Attorney Blog, posting of March 26, 2008.

78 See 15 U.S.C. § 1127; TBMP § 403.04; see also Luehrmann v. Kwik Kopy Corp., 2 U.S.P.Q. 2d 1303 (T.T.A.B. 1987).

79 See the statutory definition for "Abandonment of a Mark" in 15 U.S.C. § 1127.

80 See id.; TMEP § 1604.11.

81 TMEP § 1604.11; see also In re Conusa Corp., 32 U.S.P.Q. 2d 1857, 1859 (Comm'r Pats. 1993); and Kelley-How-Thomson, 118 U.S.P.Q. 40 (Comm'r Pats. 1958).

82 ITC Ltd. v. Punchgini, Inc., 82 U.S.P.Q. 2d 1414 (2d Cir. 2007).

83 Id. at 1417.

84 Id. at 1423-25.

85 Id. at 1423.

86 Id. at 1424.

87 Id.

88 Although it is the abandonment that must be first strictly proven by clear and convincing evidence, see 2 McCarthy, supra note 10, § 17:12.

89 15 U.S.C. § 1958(a) and (b).

90 TMEP § 1604.11.

91 TMEP § 1604.11.

92 15 U.S.C. § 1058(a).

93 15 U.S.C. § 1058(b).

94 15 U.S.C. § 1058(c).

95 3 McCarthy, supra note 10, § 19:137.50.

96 15 U.S.C. § 1058(c).

97 See 3 McCarthy, supra note 10, § 19:137.50.

98 See the definition of "related company" in 15 U.S.C. §§ 1127 and 1055; see also 2 McCarthy, supra note 10, § 18:48.

99 See id.; see also, e.g., Ritchie v. Williams, 73 U.S.P.Q. 2d 1430 (6th Cir. 2005).

100 See id., see also 2 McCarthy, supra note 10, § 18:48.

101 Barcamerica Int'l USA Trust v. Tyfield Imps., Inc., 62 U.S.P.Q. 2d 1673 (9th Cir. 2002); 2 McCarthy, supra note 10, § 18:59.

102 See, e.g., NAACP v. NAACP Legal Defense & Educ. Fund, Inc., U.S.P.Q. 264 (D.C. Cir. 1985), 2 McCarthy, supra note 10, § 17:17.

103 See 15 U.S.C. § 1064 (Cancellation of Registration).

104 Am. Thermos Prods. Co. v. Aladdin Indus., Inc., 207 F. Supp. 9 (D. Conn. 1962).

105 In re Bayer Aktiengesellschaft, 82 U.S.P.Q. 2d 1828 (Fed. Cir. 2007).

106 DuPont Cellophane Co., Inc. v. Waxed Prods. Co., Inc., 30 U.S.P.Q. 332 (2d Cir. 1936).

107 See also Heroes, Inc. v. The Boomer Esiason Hero's Found., Inc., 43 U.S.P.Q. 2d 1193, 1196 (D.C. Cir. 1997).

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