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 Thursday, August 2, 2018

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 Trademark Trial and Appeal Board’s precedential opinion in Tao Licensing L.L.C. v. Bender Consulting Ltd. d/b/a Asian Pacific Beverages (Dec. 2017) emphasized the need to demonstrate actual use in commerce to register a mark. The TTAB distinguished recent decisions by the Federal Circuit, including Christian Faith Fellowship v. Adidas AG (Fed. Cir. 2016), in which the court held that evidence of just one sale qualified as use in commerce under the Lanham Act.

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 before filing the application [Doctor’s Assoc. v. Janco L.L.C. (T.T.A.B. 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 noteworthy issues:

  • How will the TTAB’s reading of what constitutes use of a mark impact applications or registrations?
  • 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?
  • What strategies should counsel employ to demonstrate sufficient nexus between a trademark and use of the mark in commerce?

Faculty

Johnson, Danielle
Danielle Johnson

Atty
Kelly IP

Ms. Johnson focuses on trademark and copyright counseling, prosecution, enforcement, and litigation. Prior to joining...  |  Read More

Litowitz, Robert
Robert D. Litowitz

Partner
Kelly IP

Mr. Litowitz has over 30 years of experience in litigating patents, trademarks, and other intellectual property...  |  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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