Two New ex Parte Trademark Cancellation Proceedings

By Julie L. Spieker

On December 18, 2021, new regulations implementing the Trademark Modernization Act of 2020 (“the TMA”) will officially go into effect allowing individuals, businesses, and the USPTO to clear unused registered trademarks from the federal trademark register. New ex parte expungement and reexamination proceedings are said to provide a faster, more efficient, and less expensive alternative […]

Jury Orders Mongols Motorcycle Club to Forfeit Trademark

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The Mongols Nation motorcycle club was recently convicted of violations of the Racketeer Influenced and Corrupt Organization Act (RICO) resulting in a California federal jury ordering the motorcycle club to forfeit its trademarked logo based on links between the image and the criminal activities carried out by the group. The imagine incorporates the motorcycle club’s […]

Gene Simmons Attempts to Trademark Iconic Hand Symbol

Kiss lead singer, Gene Simmons, recently filed a trademark application with the United States Patent and Trademark Office (USPTO) to register the famous rock ‘n’ roll “horns” hand gesture as a trademark. Simmons filed the application June 9th to register “a hand gesture with the index and small fingers extended upward and the thumb extended […]

USPTO Heightens Post-Registration Requirements for Trademarks

The U.S. Patent and Trademark Office (USPTO) has recently made changes to the post-registration requirements for U.S. trademark registrations. Effective March 21, 2017, the USPTO will implement a post-registration audit program intended to obtain additional evidence and ensure accuracy of claims that a trademark is in use in commerce in connection with the goods/services listed […]

Second Circuit limits 1-800 Contacts; keyword advertising can be use in commerce

In a recent decision, the Second Circuit reversed a district court's grant of a motion to dismiss in a trademark infringement case. The district court, relying on the Second Circuit's 2005 decision in 1-800 Contacts, Inc. v. WhenU.com, Inc., held Google's use of its Adwords and Keyword Suggestion Tool to cause advertising to appear when […]

Second Circuit: Sales pitch of slogan to credit card companies not use in commerce

In a decision Monday, the Second Circuit affirmed a district court's summary judgment in a trademark case involving the slogan "My Life. My Card." An individual threatened to sue American Express for use of the slogan, alleging that he had superior rights in the mark based on efforts to license the phrase to various credit […]

Seventh Circuit: single sale insufficient use in commerce to support trademark registration

In Custom Vehicles, Inc. v. Forest River, Inc., the Seventh Circuit Court of Appeals held that a trademark plaintiff did not engage in sufficient use in commerce to support trademark rights. Even worse for the plaintiff, the court held that even if there were sufficient use, the mark at issue was descriptive, and there was […]

Trademark “use in commerce” must be lawful to build trademark rights

When is a use in commerce not sufficient to build trademark rights? When that use is unlawful. The Ninth Circuit, in a dispute between two manufacturers of antioxidants made from olive extract, held in an issue of first impression in that circuit that unlawful use in commerce cannot support federal trademark rights. This decision agrees […]

“Use in commerce” not necessary to support trademark opposition, just use in the United States

The Federal Circuit, reversing the Trademark Trial and Appeal Board ("TTAB"), found that a Canadian company who arguably only did business in Canada could oppose a trademark application based on "spillover" use of its unregistered trademark in the United States. The Canadian company, First Niagara Insurance Brokers, opposed several trademark applications filed by a United […]