News & Analysis as of

Non-Use of Trademarks

Miller Nash LLP

[Webinar] How To Protect Your IP by Avoiding Common Trademark Mistakes - January 22nd, 9:00 am - 10:30 am PDT

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We are excited to extend a special invitation to you for an upcoming webinar dedicated to "How To Protect Your IP by Avoiding Common Trademark Mistakes” — a comprehensive session designed to equip you with the knowledge you...more

Linda Liu & Partners

How Do Trademark Registrants for OEM Production Respond to Cancellation based on Non-use for 3 Consecutive Years?

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In recent years, the number of cancellations based on non-use of trademarks for 3 consecutive years has increased year by year. When submitting use evidence to the CNIPA in response to the cancellation, there is a situation...more

DarrowEverett LLP

Lessons From the License to Drive (and Protect) Sports Illustrated

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For years, Sports Illustrated (SI) has provided exclusive, in-depth looks into some of sports’ greatest games and players, with its voice and visuals providing great entertainment and information for sports fans around the...more

Kilpatrick

6 Key Takeaways - Cross-Jurisdictional Nonuse Actions

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Kilpatrick partners Crystal Genteman and Wendy Cheng recently presented “Big Little Fires Everywhere: Cross-Jurisdictional Nonuse Actions to Clear Deadwood” at the firm’s annual 2024 Advanced Trademark Law Seminar in New...more

Seyfarth Shaw LLP

Spireon Decision Shifts Burden of Proving Non-Use to Opposer

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The Federal Circuit partially refuted the long held assumption that the trademark applicant has the burden of proving third party marks were in use when determining the strength of the applicant mark. The panel led by Judge...more

Fenwick & West LLP

Federal Circuit Turns the Burden on Trademark Owners to Prove Identical Third-Party Marks Are Not in Use

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In Spireon, Inc. v. Flex Ltd., No. 2022-1578 (Fed. Cir. June 26, 2023), the Federal Circuit took a surprising turn in which it held that it is the trademark owner’s burden to prove that identical third-party marks put forth...more

Jones Day

Trademark Revocation Actions for Non-Use: Who Bears the Burden?

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CJEU Decision  - In Maxxus Group GmbH v Globus Holding GmbH C‑183/21, the CJEU was asked whether German procedural rules were consistent with Article 19 of the Directive (EU) 2015/2436 on revocation of trademark rights for...more

Levenfeld Pearlstein, LLC

Modern Problems: Recent and Upcoming Changes to US Trademark Practices Could Impact Your Business

The Trademark Modernization Act of 2020 (TMA) was signed into law on December 27, 2020. The TMA amended the federal trademark law (known as the Lanham Act) to provide new tools to address abuses of the US trademark...more

Fitch, Even, Tabin & Flannery LLP

Trademark Modernization Act Provides Cancellation of Unused Marks

The Trademark Modernization Act (TMA) came into force December 18, 2021. Key provisions of the TMA enlarge options for cancelling a trademark registration in whole or in part by targeting nonuse of the registered mark for...more

Dorsey & Whitney LLP

Final Rules for Trademark Modernization Act in Effect This Weekend - New Nonuse Procedures Available and Shortened Office Action...

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Attention trademark practitioners: the finalized rules implementing the 2020 Trademark Modernization Act (“TMA”) go into effect this weekend, on December 18, 2021. Significantly, this marks the availability of three new...more

Dunlap Bennett & Ludwig PLLC

Trademark Alert: USPTO Announces Temporary Excusable Nonuse Exemption for Trademark Owners Impacted by COVID-19

In response to the protracted impact of COVID-19, the US Patent and Trademark Office (USPTO) has determined that the pandemic constitutes an extraordinary situation warranting several announcements over the past year that...more

International Lawyers Network

Can U.S. Trademark Registrations Be Cancelled for Non-Use?

Suppose that you want to register a trademark that identifies a source of goods or services for your business. What if you file a federal trademark application and the U.S. Patent and Trademark Office refuses registration of...more

Bradley Arant Boult Cummings LLP

Overcoming TM Maintenance Filing Hurdles Amid Pandemic

As we near the second year of the COVID-19 pandemic, trademark maintenance deadlines in 2021 create new obstacles for registrants. To maintain a federal trademark registration, registrants must periodically file an...more

Bradley Arant Boult Cummings LLP

As Pandemic Drags On, Trademark Registrants May Face Maintenance Filing Hurdles

Despite the black humor that March 2020 has never actually ended, time does keep marching on and presenting new challenges. As we near the second year of the COVID-19 pandemic, trademark maintenance deadlines in 2021 create...more

Dorsey & Whitney LLP

Highlights Part II of the Trademark Modernization Act of 2020: Ex Parte Expungement, Ex Parte Reexamination, and Non-Use...

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As we wrote in Part 1 of this series, the Trademark Modernization Act of 2020 (“TMA”) was signed into law on December 27, 2020, and contained several significant amendments to the Lanham Act. This post will cover three of the...more

White and Williams LLP

Winter COVID-19 Relief Bill: Overview of Key IP and Entertainment Provisions

Congress passed The Consolidated Appropriations Act, 2021 (Act) on December 21, 2020 and the Act was signed into law by President Trump on December 27, 2020. Though titled as COVID relief, the Act includes sweeping changes to...more

Robinson & Cole LLP

IP+T: Intelligence Newsletter - Q4 2020

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Ready for 2021? Make Your (IP) List and Check It Twice - The events of 2020 have posed unique challenges to businesses in the U.S. and globally, testing their ability to adapt to new market conditions, re-evaluate resource...more

Williams Mullen

PODCAST: Williams Mullen's Trending Now - Enforcing and Expanding Your Brand During the COVID-19 Pandemic

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On the latest episode of Williams Mullen's Trending Now - An IP Podcast, Ed White is joined by Janet Cho to discuss specific strategies to protect and enhance your brand during the COVID-19 pandemic....more

Buchalter

Buchalter COVID-19 Client Alert: Excusable Non-Use of U.S. Trademarks in the Time of COVID

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U.S. Trademark laws are based on the premise that rights in a trademark exist so long as the mark is continuously used in interstate commerce. Once you cease use of the mark without an intention of resuming such use, the mark...more

Mintz - Intellectual Property Viewpoints

How to Maintain Your Trademark Rights When Your Business is Closed

Trademark rights in the US are based on use of a mark not on registration. Failure to use your mark on a product or to offer a service to the public can result in an abandonment of your trademark rights and an inability to...more

Seyfarth Shaw LLP

Can COVID-19 Provide a Sufficient Basis for Claiming Excusable Nonuse of a Trademark?

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As others have previously reported, the US Patent and Trademark Office (USPTO) has taken the position that the COVID-19 pandemic constitutes an “extraordinary situation” warranting suspension of certain rules relating to...more

Fox Rothschild LLP

Excusable Nonuse Of A Trademark Due To Coronavirus

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With the closure of “non-essential” businesses throughout the country and the world, the use of trademarks on and in connection with products and services may be interrupted or altogether halted for a period of time. This...more

International Lawyers Network

Reviving a brand? A reminder to ensure it is put to genuine use

The case of Aiwa Co. Ltd v Aiwa Corporation is a useful reminder to brand owners, particularly those who are looking to revive a brand, of what amounts to “genuine use” of a registered trade mark. The case particularly...more

Dechert LLP

Brexit Manoeuvres: Brexit and Trade Marks

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With a “no-deal” scenario looking increasingly more likely, what should brand owners be doing to prepare for 31 October this year? EU trade marks in the UK - Once the UK leaves the EU, existing EU trade marks (EUTMs)...more

Hogan Lovells

EUIPO: Repeat trademark applications for the same classes can equate to bad faith

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In July, the Second Board of Appeal of EUIPO declared the MONOPOLY trade mark invalid to the extent that the underlying application covered goods and services for which the trade mark was already registered. Such filings...more

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