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

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Program Materials

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.

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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

Baird, Stephen
Stephen R. Baird

Shareholder
Winthrop & Weinstine

Mr. Baird heads the Intellectual Property and Trademark and Brand Management Practice Groups, and his practice...  |  Read More

Hudis, Jonathan
Jonathan Hudis

Partner
Quarles & Brady

Mr. Hudis counsels clients in trademark, copyright, unfair competition and trade secrets matters and is well...  |  Read More

McLeod, Linda
Linda K. McLeod

Partner
Kelly IP

Ms. McLeod's practice focuses on litigation before the Trademark Trial and Appeal Board and the courts, trademark...  |  Read More

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