Demonstrating Use in Commerce for Trademark Applications

Navigating Use in Commerce Requirements Under the Lanham Act and for Purposes of Registration

Recording of a 90-minute CLE webinar with Q&A


Conducted on Tuesday, January 31, 2017
Recorded event now available


This CLE webinar will provide guidance to trademark counsel on “use in commerce” for trademark applications under the Lanham Act as well as for trademark registrations. The panel will discuss the impact of recent decisions on use in commerce and will offer strategies for providing evidence of use in commerce.

Description

The Federal Circuit recently reversed the Trademark Trial and Appeal Board’s (TTAB) cancellation of two marks, concluding a church’s out-of-state sales of goods bearing the disputed slogan invoked Lanham Act protection [Christian Faith Fellowship v. Adidas AG (Fed. Cir. Nov. 14, 2016)]. The TTAB previously ruled that the church’s sales were insufficient for the mark to be registered. The Federal Circuit’s decision provides IP attorneys with guidance on how much actual use in commerce is necessary to register a mark.

In another recent case, the TTAB found a use-based trademark application was void ab initio because the applicant did not use the mark in commerce in connection with its goods prior to filing the application [Doctor’s Assoc. v. Janco L.L.C. (T.T.A.B. Jan. 7, 2016)]. In Janco, the TTAB took a narrow position on what constitutes use in interstate commerce.

To prove use of a trademark in commerce, the applicant must demonstrate that each of the specific goods and services in the application or registration is currently sold and delivered to U.S. customers under the mark. Counsel to trademark applicants must understand what it takes to show sufficient nexus between the trademark and the use of the mark while meeting the USPTO’s specimen requirements.

Listen as our authoritative panel examines what “use in commerce” is under the Lanham Act and for purposes of trademark registration. The panel will discuss what is proper or acceptable evidence of use in commerce and offer best practices for demonstrating use in commerce.

Outline

  1. Use in commerce
    1. Under the Lanham Act
    2. For purposes of trademark registration
  2. Proper or acceptable evidence of use in commerce
  3. Best practices for demonstrating use in commerce

Benefits

The panel will review these and other key issues:

  • What is the effect of the Federal Circuit’s fairly broad interpretation of use in commerce in determining what is necessary to register a trademark?
  • How will the TTAB’s narrow reading of what constitutes use of a mark in interstate commerce impact applications or registrations?
  • What strategies should counsel employ to demonstrate sufficient nexus between a trademark and use of the mark in commerce?

Faculty

Stephen R. Baird, Shareholder
Winthrop & Weinstine, Minneapolis

Mr. Baird heads the Intellectual Property and Trademark and Brand Management Practice Groups, and his practice emphasizes trademark law, related unfair competition law and copyright law. He counsels clients on trademark usage and clearance, branding strategies, portfolio management, litigation and enforcement, Internet domain name disputes, licensing and prosecution.

Jonathan Hudis, Partner
Quarles & Brady, Washington, D.C.

Mr. Hudis counsels clients in trademark, copyright, unfair competition and trade secrets matters and is well versed in trademark prosecution and registered copyright protection matters. He is an adjunct professor of trademark and unfair competition law at the George Mason University School of Law.

Linda K. McLeod, Partner
Kelly IP, Washington, D.C.

Ms. McLeod's practice focuses on litigation before the Trademark Trial and Appeal Board and the courts, trademark clearance and prosecution, and client counseling. She gained significant expertise while serving as Administrative Trademark Judge and Interlocutory Attorney with the TTAB. She sat on panels that decided cases involving a variety of marks, including product configurations and color trademarks.


Recordings

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Intellectual Property Law Advisory Board

Stephen R. Baird

Shareholder

Winthrop & Weinstine

Charles S. Baker

Partner

Locke Lord

David S. Bloch

Partner

Winston & Strawn

Ian N. Feinberg

Partner

Feinberg Day Alberti & Thompson

Bassam N. Ibrahim

Shareholder

Buchanan Ingersoll & Rooney

Mark P. Wine

Partner

Orrick

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