Companies must promptly review their existing trademark portfolio of registrations and applications with regard to "use" issues, including those based on foreign registrations.
A recent line of administrative and federal court decisions jeopardize the validity of countless U.S. trademark applications and registrations. Companies that have spent many decades and millions of dollars on developing and maintaining their brands could lose valuable rights in those brands.
Use-based trademark applicants and trademark registrants often broadly describe the goods and services on which the mark is being used, including goods and services that technically may not be in use with the mark. Provided that the mark was in use on some goods or services in the application or registration, the U.S. Patent and Trademark Office generally treated such misstatements as harmless and liberally allowed amendments of registrations.
That rule just changed. The administrative and federal courts are increasingly holding that if a mark is not in use on each of the goods or services specified in a use-based application or a renewal application, the registration may be cancelled for fraud and cannot be freely amended. Under the Lanham Act, fraudulent registrations also subject trademark owners to damages.
What Should You Do?
Promptly review your existing trademark portfolio of registrations and applications with regard to these "use" issues, including those based on foreign registrations. A trademark owner that voluntarily amends a registration to correct an error substantially reduces or eliminates the chance that the registration will be deemed fraudulent. A trademark owner that waits for a third-party challenge to the registration faces a substantial risk of cancellation. New applications should also be filed under certain circumstances.
Pay special attention to the drafting of trademark applications and renewals. Obtain and maintain evidence of use for each good and/or service identified in the use-based trademark application or renewal application.
Consult counsel before instituting any enforcement proceeding involving a registered mark that may have "use" issues. Consult counsel about the possibility of raising a fraudulently procured registration as a defense to an infringement claim.
The McDermott Difference
Need more information? McDermott's Intellectual Property, Media & Technology Department includes more than 200 lawyers and patent agents working in all of our offices throughout the world. Our lawyers have deep experience in global auditing of trademark portfolios, including offensive and defensive fraud protection and counseling on the strategic refinement, supplementation and exploitation of those portfolios, as well as trademark and unfair competition litigation. The Firm is currently litigating several suits involving allegedly fraudulently procured trademark registrations.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
