The Trademarks Law Review: USA

Overview

The US trademark system provides for both federal and state protection of trademarks. Whether under federal or state law, registration is not a prerequisite for enforceable rights.

What is required is use of the mark in the ordinary course of business and not merely to reserve rights in the mark.

Also required is a term, device of goods or services or trade dress of goods that functions as a mark to indicate source or sponsorship or affiliation. That is, what is asserted as a mark must not be functional, ornamental, generic for the goods or services, merely descriptive without acquired distinctiveness or merely informational.

The procedural and substantive benefits that accrue to federal registration, however, are substantial enough that federal registration is generally sought by trademark owners, where possible.

Typical instances in which federal protection by registration is not sought include where the use of the mark is expected to be short-lived, the use is in the nature of a descriptive or highly suggestive tag line and has not been substantially exclusive, the use is essentially ornamental or informative, or there is a prior user or holder of a trademark registration not subject to challenge operating in a remote geographical area in a manner such that there is no foreseeable overlap in the marketplaces so that there is little likelihood of confusion.

Legal framework

i Legislation

The principal statute dealing with trademark and unfair competition law in the United States is the Lanham Act, 15 USC Section 1051 et seq. The Act has been amended numerous times since its effective date more than 70 years ago. The amendments have, among other things, made dilution of famous trademarks a federal offence; provided statutory damages as a remedy against sellers of goods bearing counterfeit marks; permitted the filing of applications for registration based on an intent to use; and created a private cause of action against cybersquatting.

The federal statute is supplemented by state trademark statutes and state common law. The state statutes provide for a registration system similar to the federal scheme. Persons may secure state registrations, particularly where the business is primarily a local one, or where there may be issues that impede securing a federal registration. There are also statutes in a number of states that are directed to unfair trade practices and provide a cause of action for competitors (other such statutes only provide for actions by customers or states' attorneys general). There are also state statutes directed to trademark dilution and also to rights of privacy and publicity that overlap only to some extent with the unfair competition provision of the Lanham Act.

The US has adhered to the Madrid Protocol (enacted as Madrid Protocol Implemental Act of 2002, 15 USC Section 1141), and international registration filings have become increasingly popular as a means of extending protection to other jurisdictions in a more economic manner than securing individual national registrations. The US has also signed the Paris Convention for the Protection of Intellectual Property and the TRIPS Agreement.

ii Authorities

Because there are protections for trademarks under both federal and state law in the US, registrations may be secured through the United States Patent and Trademark Office (USPTO) or the trademark offices in each of the states and territories, or both.

The USPTO's Trademark Trial and Appeal Board (TTAB) hears appeals from refusals of registration by examiners at the USPTO, as well as challenges to registration in inter partes proceedings, primarily oppositions and cancellations, but also concurrent use proceedings through which parties may secure federal registration effective in specified geographical areas of the country. Appeals on matters of registrability may be taken to the Court of Appeals for the Federal Circuit or to a United States federal district court.

The TTAB can only determine questions of registrability. It cannot enjoin use of a trademark, nor may it award attorneys' fees, costs of the action or monetary damages.

The federal district courts also have authority under the Lanham Act to rule on issues of registrability that are raised in appeals from TTAB decisions and also in civil litigation directed to trademarks under the Lanham Act, 15 USC Section 1119. The federal district courts, unlike the TTAB, have the authority to enter mandatory and prohibitory injunctions and grant awards of attorneys' fees and costs and damages for infringement, pursuant to 15 USC Section 1117; to order the destruction of infringing articles, pursuant to 15 USC Section 1118; and to assess damages for fraudulent registration under 15 USC 1120.

The state courts have parallel jurisdiction to hear questions of trademark infringement under state and common law. The state courts generally follow the federal precedential decisions and, except where there is some difference between the laws (such as the dilution provisions where the state statutes do not require the same degree or level of fame as the Lanham Act), the state and federal laws are considered to be essentially the same. The geographical scope of injunctive relief granted by a state court may be more limited.

iii Substantive law

Trademarks may be registered both under federal and under state law. The state statutes generally track the federal statute on matters of registrability.

Marks can be protected whether or not registration has been secured. Unregistered marks are entitled to protection based on use in the geographical areas within which the mark has been used and otherwise made known, such that there is a reputation and goodwill entitled to be protected in the interest of avoiding likelihood of confusion of the relevant public and trade as to the source or sponsorship of the goods or as to an affiliation between the providers of the goods or services.

Marks that are well known, whether or not they are registered for particular goods or services, may be entitled to a broader scope of protection based on the likelihood that there will be a misperception of source, sponsorship or affiliation, even on goods not closely related to the core business for which the mark is well known. This is predicated on the prevalence of licensing as a means of extending the recognition of a mark to goods and services beyond the core business, as well as generating additional revenue streams for the mark owner. To the extent that trademark rights are territorial, protection has been sought within the US for trademarks used outside the US, taking note of Section 6 bis of the Paris Convention and precedent from several courts. The US circuits are split on the availability of protection for marks used outside the US, and famous within the US but not in use there.

The scope of protection that a mark (or name) is accorded depends not only on the inherent strength of the mark or name (e.g., a mark lacks inherent strength if it is descriptive of the nature of the goods or an aspect of the services, and a mark has inherent strength if it is fanciful; that is to say, a coined term having no meaning or if there is no direct meaning relevant to the particular goods or services) but also, and often more so, on the commercial strength acquired through the nature and extent of use and promotion and consequent commercial success.

Trade names and the names under which businesses are known can be and are protected from infringement both under federal and state law in the same manner as unregistered trademarks. Protection is predicated on the fact that such names function to identify the source (i.e., the business offering the goods or rendering the service) to the relevant public and trade.

Corporate names and fictitious names are registered on a state-by-state basis. Such registrations provide no basis for action against entities using the same or similar names and, more importantly, such registrations provide no defence to claims by a prior user that the fictitious name or other name infringes its rights where there is likelihood of confusion. The likelihood of confusion must be a tangible one, a probability rather than a mere possibility, and not simply hypothetical based on the filing and registration.

Trade names and business names that are subject to protection under federal and state law, and domain names, cannot be registered as trademarks except to the extent that they are used as trademarks, but the laws with respect to unfair competition preclude use of marks or names that are likely to cause confusion with existing marks or names. Also, 15 USC Section 1052(d) permits oppositions to registration of a mark and petitions to cancel a registration of a mark based on prior use of a trade name. The extent of protection granted to such names, outside the context of registration, is limited to the area within which the name is known and associated with a single source of origin with respect to that particular business, in much the same manner as protection for unregistered trademarks.

Geographical indications are protected under US law through a combination of statutory provisions. Certification marks identify products that conform to a specified standard that may include geographical origin (e.g., Idaho potatoes). The Lanham Act prohibition against false designations of geographical origin precludes use of deceptive statements of origin (referring to a sparkling wine from California as Champagne, for example). 15 USC Section 1052(e) precludes registration of deceptively misdescriptive geographical terms.

Domain names are website addresses. The domain name is a unique identifier of a web address and nothing more. 15 USC Section 1125(d) addresses cybersquatting by creating a private cause of action by a trademark owner against a domain name registrant who has a bad faith intention to profit from the mark. It is also possible to bring an in rem action against domain names that consist essentially of counterfeits of marks. The issue with domain names is complicated by the fact that the registration of the name may be, and often is, divorced from any specific content that would create a likelihood of confusion as to source or sponsorship for any discrete visitor to the site, and many marks are not unique to one registrant (e.g., numerous companies own the mark ACME for diverse goods and services). To the extent that a domain name is also used as a trademark or trade name, the name can be protected as such.

The Supreme Court of the United States held in June 2020 that the addition of a top level domain such as '.com' to an otherwise generic term, is capable of having source-identifying significance and therefore eligible for trademark protection. In that case, the Court found that the term 'booking.com' did not signify to consumers the generic concept of online hotel-reservation services, but rather, was established by survey evidence to indicate a specific website. The Booking.com decision resolved a circuit split and clarifies examination practice at the USPTO with respect to 'generic.com' marks, having rejected the USPTO's proposed per se rule that a generic term plus a top-level domain is unregistrable.

As with any other term or designation, social media handles (@username) and #hashtags are only protectable as trademarks if they are being used as such. Social media usernames may be registrable and protectable for entertainment services in the nature of publishing electronic content on the internet; for example, if the services are commercial in nature. The USPTO's Trademark Manual of Examining Procedure (TMEP) specifically addresses registrability of hashtag marks, stating that '[a] mark consisting of or containing the hash symbol (#) or the term HASHTAG is registrable as a trademark or service mark only if it functions as an identifier of the source of the applicant's goods or services'. In general, the hash symbol 'does not provide any source-identifying function' where it merely 'facilitate[s] categorization and searching within online social media'. The addition of a hash symbol to an otherwise unregistrable mark will not render the hashtag registrable. Conversely, neither registration nor use of a protectable mark with the addition of a hashtag is required to assert a claim for infringement of the mark as used by an infringer on social media as a hashtag.

Registration of marks

Applications for registration can be filed on the basis of use or intent to use. No registration will issue until a declaration of use is filed and proof of use is accepted. The exception is for registrations based on a non-US registration under international conventions. Notably, while a non-US entity does not need to show proof of use of a mark in the United States to secure the registration, the registration will be cancelled if the registrant fails to file proof of use in the United States for the goods or services identified in the registration certificate between the fifth and sixth years after the issue date of the registration. The registration is also susceptible to a petition for cancellation based on abandonment by non-use after the three-year statutory presumption of abandonment has passed from the date of registration.

If an application is filed on the basis of use, and there are no objections raised to the application as filed, there are no extensions of time to oppose, and if no oppositions are lodged against the application, registration should issue between nine and 11 months after the filing date. According to the USPTO, it takes about three months for the trademark application to be reviewed by an examiner, and, on average, approximately 10.7 months for the application to reach registration.

Any USPTO office actions raising issues with respect to the application, such as with respect to descriptiveness, functionality, prior registrations, the identification of goods or the sufficiency of the specimens of use, will delay acceptance of the application for publication for the purposes of opposition. If the application is filed on the basis of intent to use, and the declaration of use is not filed and accepted before the mark is approved for publication, a notice of allowance will issue after the close of the opposition period. The applicant then has six months to file a declaration of use and proof of use, or a request for an extension of time to make such filing. The applicant may secure up to five extensions of six months each to file the proof of use.

The fees associated with filing a new trademark application are US$400 per class using the regular Trademark Electronic Application System (TEAS) form, US$275 using the TEAS reduced fee form, and US$225 using the TEAS Plus form (in which the applicant selects the goods and services listing from existing entries in the USPTO Trademark Identification Manual). As of October 2019, the USPTO will no longer accept paper trademark filings.

As of August 2019, the USPTO requires that all foreign-domiciled trademark applicants must be represented by an attorney who is licensed to practise law in the United States.

i Inherent registrability and acquired distinctiveness (secondary meaning)

There is a wide range of words, phrases, designs, symbols and trade dress that are inherently registrable.

There are some marked exclusions within that listing of items potentially inherently registrable. That is to say, an applied-for 'mark' may be found not to be inherently registrable if, in relation to the goods or services identified in the application, it is merely descriptive, primarily a surname, primarily geographically descriptive or if it fails to function as a mark by virtue of being ornamental or informational, or functional in the context in which it is used. Additionally, product configurations are not inherently registrable, although they may be registered upon proof of acquiring secondary meaning. This is in contrast to trade dress, such as colours used on product packaging, which can be inherently distinctive.

Marks that are merely descriptive, primarily surnames or geographical designations may be registered on the basis of acquired distinctiveness. Five years' continuous, commercially significant and substantially exclusive use creates a presumption of acquired distinctiveness. For highly descriptive marks, more proof may be required, and, in appropriate cases, less time is required for a finding of acquired distinctiveness.

ii Prior rights

Prior rights may provide a basis for precluding registration or cancelling a registration.

Prior use in even a limited geographical market provides grounds for defeating a registration if the junior use or trademark claim is of a confusingly similar mark used in connection with the same or related goods or services.

Prior rights, however, may be extinguished and so become unavailable as grounds to challenge the registration of a junior user's mark. These prior rights may be extinguished in a number of ways, the most common of which are: (1) abandonment, with non-use for three years giving rise to a presumption of abandonment; (2) naked licensing, so that the mark no longer functions to identify the senior user as the source of the goods or services (a licensee will be estopped from relying on its licensor's failure to exercise quality control but is not precluded from relying on the licensor's failure in other instances to exercise quality control over the nature and extent of the use of the mark); and (3) assignment in gross, where the mark is separated from the goodwill associated with it.

With respect to abandonment, a change in the form of the mark, from that in which it is registered, may leave the registration subject to cancellation, which may affect the respective rights of the parties even where the use of at least some component of the mark as originally registered remains. Additionally, once a mark has been abandoned, subsequent use cannot retroactively cure the past abandonment.

iii Inter partes proceedings

The inter partes proceedings before the TTAB are governed by the Federal Rules of Civil Procedure and the Federal Rules of Evidence, except where the TTAB has established an exception to the Federal Rules. Recent rule changes have been made to make the proceedings more efficient and less costly, permitting testimony to be made of record by declaration so long as the declarant is subject to cross-examination, and limiting the number of interrogatories, requests for production of documents, and requests for admissions that may be made in discovery, to 75 each. Under the Accelerated Case Resolution procedure, the parties can stipulate other measures to make the proceeding more efficient, such as by further limiting discovery, waiving cross-examination and agreeing to shorter time frames for filings than are provided by the TTAB. Under consideration is a rule change to simplify and expedite cancellation proceedings brought on the basis of abandonment of the mark of the registration.

The most common inter partes proceedings are oppositions and cancellations. The same basic standards apply in the US as elsewhere. In each instance, the party in the position of the plaintiff must allege and establish timeliness of the filing, standing to bring the proceeding (a legitimate commercial interest in the outcome) and grounds (such as genericity of the challenged mark, functionality, likelihood of confusion with a mark previously used or registered and not abandoned).

Concurrent use proceedings are available in limited circumstances. The difficulty in securing a concurrent use registration is the requirement that each or all of the parties operate in a distinct geographical market, such that there is no likelihood of confusion arising from the concurrent use and registration. This creates obvious difficulties with online sales of goods and is best adapted to local food service operations, medical practices, community banks and credit unions, and other service industry segments where the customer base is largely local.

iv Appeals

Appeals from decisions of the TTAB may be taken to either the Court of Appeals for the Federal Circuit or to a US federal district court. There are marked differences between these courts for appeals.

An appeal to the Federal Circuit is decided on the basis of the record before the TTAB. No new evidence and no new claims will be considered.

If the appeal is taken to a district court, there is an opportunity to raise new claims and to introduce additional evidence. By way of example, if the issue is whether secondary meaning in a mark has been achieved, and the record below was not persuasive, a survey or other expert evidence might be introduced. In the context of an appeal in an inter partes proceeding, a claim for infringement may be brought. Alternatively, a claim for a declaratory judgment of non-infringement may be introduced into this proceeding.

Civil litigation

i Forums

Civil actions for trademark infringement and unfair competition in the nature of trademark infringement (akin to passing off) may be brought either in state courts or in federal district courts.

The advantages of filing in the federal courts include the ability to secure nationwide relief, access to broad subpoena power to secure testimony, and a substantial body of precedent. The advantages of filing in the state courts include (1) greater familiarity with state statutes that may provide an ancillary basis for recovery (state unfair trade practice acts may provide a competitor with a cause of action); (2) state dilution statutes will not require the same degree of fame as is required for a plaintiff to prevail on a federal dilution claim under the Lanham Act 15 USC Section 1125(c); and (3) greater familiarity with the local market and other conditions, which might make confusion more likely or might result in a particular understanding of a term in issue.

ii Pre-action conduct

Prior to commencement of an action for trademark infringement, there are a number of steps the potential claimant may take. Diligence is always advisable, to confirm priority and to ascertain the strength of the claim, potential weaknesses and counterclaims. Where there is some doubt as to the strength of the claim, a pre-litigation survey may be undertaken to ascertain whether it may be advisable to pursue a course other than litigation.

Once the decision has been made to proceed, it is usual, but not mandatory, for a cease and desist letter to be sent to the appropriate party on the other side. The cease and desist letter should be drafted with care and sent only when the client is committed to litigate if an amicable resolution cannot be achieved. One benefit of a cease-and-desist letter is that it can open up a dialogue. It can also bring out issues and facts not previously ascertained that affect the determination of how best to proceed.

Before litigation begins, the parties can agree to take steps to resolve a dispute, including the informal exchange of information and documents that otherwise would not be available until the formal discovery process has begun. The parties may agree to a settlement conference or even mediation. Such discussions have the possible outcome of a business resolution that addresses the needs of both parties.

iii Causes of action

In civil litigation, the actions typically brought in federal court are for trademark infringement under the Lanham Act 15 USC Section 1114 if the mark is registered, and under 15 USC Section 1125(a) whether or not the mark is registered. Section 1125(a) of the Act provides a federal cause of action for unfair competition in the nature of trademark infringement. The unfair competition claim is essentially a claim for passing off. While only the owner of the registration can bring a claim for infringement based on registration, an exclusive licensee can bring a claim under Section 1125(a) for violation of rights.

The test for violation of the statute is essentially the same, whichever provision is invoked: is there a likelihood (that is, a probability and not a mere possibility) of confusion as to source or sponsorship or affiliation? The determination of infringement or passing off is based on consideration of various factors, most particularly the degree of relationship between the goods and services and the degree of similarity between the marks. Also of importance are any evidence of actual confusion where such confusion might be expected to have come to the parties' attention, the conditions in which purchase decisions are made, overlap in trade channels and classes of customers, the strength of the senior user's mark, and the intent of the junior user.

The benefit of being able to invoke a registration on the Principal Register are the evidentiary presumptions of ownership and the exclusive right to use of the mark for the goods or services identified in the certificate of registration. Those presumptions are rebuttable for only the first five years after the date of issue of the registration. If the plaintiff's mark has nationwide fame, a claim for dilution may also be brought under Section 1125(c).

Disputes as to trade or business names may be resolved in federal court under the same provision of the statute as protects unregistered marks.

Trademark and trade or business name disputes may also be resolved in state courts on essentially the same basis.

Claims for cybersquatting may be brought in appropriate cases in federal court under Section 1125(d) of the Lanham Act, as well as under the various dispute resolution procedures established under ICANN.

Disputes that relate to use of company names that do not involve trademark or trade name-type use are resolved at the state level, and the procedures vary from state to state.

iv Conduct of proceedings

In civil actions for trademark infringement or unfair competition in the nature of trademark infringement, the proceeding is commenced by the filing and service of a complaint in accord with 15 USC Sections 1114 and 1121. The plaintiff may or may not ask for preliminary injunctive relief.

The defendant may respond by filing a motion to dismiss on a number of grounds, including lack of jurisdiction and failure to state a claim on which relief may be granted. The defendant may answer and file and serve counterclaims for a declaratory judgment of non-infringement, or for infringement if the defendant believes it can establish priority, or for cancellation of the plaintiff's registration on any of the grounds on which a cancellation petition might be filed in the Trademark Office. If there has been a prior opposition or cancellation proceeding between the same parties involving the same marks and issues, relitigation may be barred in the federal courts under the doctrine of issue preclusion.

Once the answer and any counterclaims are lodged and responded to, the district court will schedule a conference with the parties to set the timetable and particular rules for the proceeding.

Prior to beginning discovery, the parties will make initial disclosures to each other, identifying those persons believed to have knowledge of the matters at issue and the location of the documents relevant to those issues.

Discovery will typically include written interrogatories, requests for production of documents and requests for admissions. The grounds for objection to discovery directed to matters at issue in the proceeding are limited; however, recently, the courts have been more willing to limit the extent of discovery when the burden and expense of production is not warranted by the value of the case.

After fact discovery concludes, there is generally a period for expert discovery. Typical expert testimony comes from industry experts who can opine about what is standard or customary or not in the industry, technical experts who can address whether or not a product configuration or package design is functional, survey experts who can testify to consumer or purchaser perception based on research they have done, and damages experts. Other types of experts called upon may testify as to the genesis or meaning of terms, as linguists.

At the close of discovery, and assuming the matter is not resolved on the basis of a summary judgment motion where the court determines that there is no material issue of fact, a trial on the merits is not required, and the outcome can be determined as a matter of law, there is a trial that may be conducted with or without a jury, depending on the nature of the relief sought (where only injunctive relief is sought, there is no entitlement to trial by jury) and whether or not a jury demand has been timely made by either party.

At trial, the parties have the opportunity to introduce evidence and present argument.

Appeals from jury verdicts are limited. In an appeal from a decision made by the court, the findings of fact are upheld if supported by substantial evidence. The conclusions of law are not accorded such deference. Whether the determination of likelihood of confusion is a finding of fact or of law, or a mixed question of law and fact, will depend on the circuit in which the trial has been held.

Proceedings before the TTAB follow a similar pattern, and the same evidentiary and procedural rules generally apply, although there are some notable variations. There is no live testimony in a TTAB proceeding; however, either party in an inter partes proceeding can request oral argument. The resolution is restricted to the question of registrability of the mark as shown in the application or registration at issue and to the goods and services as set out in the identification of goods and services. That is, the real-world marketplace context may not be considered if the subject mark is presented in block letter 'standard format' rather than in the logo form actually used, or with other distinguishing matter that is actually used, and differences between the precise channels of trade used by the parties may also not be considered if the application or registration contains no restriction on trade channels and the goods and services are such that move through other or broader channels of trade.

v Remedies

There is a broad range of remedies that may be granted by the courts once infringement or unfair competition is found.

The statutes provide for injunctive relief. Injunctions may be mandatory as well as prohibitory. That is, a court can order a recall of goods bearing the infringing marks. A court may order that corrective advertising be undertaken or disclaimers of affiliation be added to materials to be published or otherwise made available.

More commonly, injunctive relief is prohibitory. The defendant is ordered to stop the conduct that is the basis of the complaint. There may or may not be a period of time within which the defendant must comply, such as 30 days from the effective date of the order. The prohibited conduct may be described in more or less detail.

The statutes also provide for monetary relief. The recovery can take the form of disgorgement of the profits the plaintiff would have made but for the infringement, particularly when the market is comprised only of the two parties. The recovery can take the form of the profits the defendant accrued that were attributable to the infringement. Recovery can also take the form of whatever other damages the plaintiff can establish with some specificity, such as the amount spent on corrective advertising to remedy the misunderstanding and confusion. Enhanced damages are available in limited circumstances, such as counterfeiting or in the case of a repeat offender.

While the federal statute provides for attorneys' fees to be awarded to the successful party, such remedy is granted in 'exceptional circumstances', such as when the losing party has, through the course of the litigation, demonstrated bad faith, raised frivolous arguments, or otherwise engaged in misconduct offensive to the court. To prevail on a motion for attorneys' fees and meet the 'exceptional circumstances' standard, a movant must make a fact-based case for why the opposing party's position was objectively unreasonable.

Other enforcement proceedings

There are a number of other venues and measures for approaching violations of trademark rights.

While the Lanham Act provides for enhanced damages and statutory damages for use of counterfeits of registered marks on and in connection with the goods and services identified in the certificate of registration, use of counterfeit marks is also a criminal offence.

US Customs and Border Control also has a role in blocking importation of infringing goods. One of the benefits of federal registration on the Principal Register is the right to record the registration with Customs, and Customs may prohibit entry into the US of infringing goods, and order the recall of infringing goods inadvertently allowed into the country. As with criminal measures, the more information that the rights holder can provide to the enforcement authorities, the more likely it is that effective action may be taken.

The rights holder receives no monetary recovery from the criminal procedure or from a seizure of goods by Customs, but the rights holder likewise incurs no direct expense of the prosecution.

Recent and pending cases

There are a number of recent cases that have the potential to result in significant changes in the practice of trademark law and that reflect current concerns.

Belmora, LLC v. Bayer Consumer Care AG tests the territoriality principle in US trademark law that rights in marks based on use outside the United States create no rights within the United States. Belmora provides for rights to be enforced in the United States based on activity outside the United States when the reputation of the mark, and the goodwill associated with it, are known to the relevant purchasing public in the United States. The aim of trademark law (i.e., to protect purchasers from confusion and to safeguard the reputation of the senior user) would appear to be better served by acknowledging such rights. There are, however, circuits that limit enforceable rights to those established through use in the US. The question then becomes what use suffices, since technical trademark use may not be required to establish rights, and use analogous to trademark use can support a finding of priority of use.

Christian Faith Fellowship Church v. Adidas AG tests the principle that some very little use, akin to token use, of a mark is insufficient to establish rights in a mark. Intrastate use that has an impact on interstate commerce has been well accepted as a basis to claim federal rights. Until the Adidas case, it was not at all clear that sporadic, isolated uses within one state might also qualify as a basis for a claim of trademark rights. Here, the priority right rested on the sale of two hats and the question of whether interstate commerce was sufficiently impacted.

Where Adidas becomes problematic is in the area of enforcement of rights, and the basis for the court's decision conflicts with precedent that restricts relief in a civil action to matters where there is a real likelihood (that is, probability) of confusion. Where there are no sales by the senior user, there can be no reasonable likelihood of confusion. Accordingly, courts generally require some significant degree of market penetration by a party in the position of plaintiff before they will enjoin even a junior user from selling into that territory. What constitutes significant market penetration then becomes an important consideration for a person seeking to enforce trademark rights. It appears – based on a recent Third Circuit decision – that the amount of business must be much greater than 'two hats', and much greater than use previously accepted as investing a party with enforceable trademark rights.

In Matal v. Tam, the Supreme Court held that the section of the Lanham Act that barred registration of disparaging trademarks was unconstitutional under the First Amendment free speech provision as based on viewpoint discrimination. The decision specifically allowed registration of 'The Slants' as a mark for entertainment services although the term was deemed to be disparaging of persons of Asian ancestry. A subsequent case dealing with scandalous marks reached a similar conclusion, with the Supreme Court striking down the ban in Iancu v. Brunetti, and holding that the mark 'FUCT' for clothing should not be refused registration on the grounds that it is scandalous. As a result of these cases, the USPTO will no longer refuse registration of marks on the grounds that they are disparaging, scandalous or immoral, and applications for such marks that were suspended pending resolution of the Brunetti case will now be examined. An open question remaining is whether dilution provisions can withstand challenge to the extent that they are predicated on tarnishment rather than blurring as the basis for the dilution claim, since tarnishment is akin to disparagement.

In Mission Product Holdings v. Tempnology, LLC, the Supreme Court ruled that a trademark licensor's rejection of a trademark licence in bankruptcy operates as a breach of contract rather than a rescission, and thus does not terminate the licensee's right to continue using the licensed trademark for the remaining term of the agreement. This ruling protects the expectations of trademark licensees in the event of the licensor's bankruptcy.

In Peters v. Nantkwest, Inc, the Supreme Court unanimously held that a patent applicant who appeals a patent examiner's rejection of a patent application by filing a civil action in the US District Court for the Eastern District of Virginia cannot be held responsible for the USPTO's 'attorneys' fees' (effectively a pro rata share of the salaries of the government attorneys who defended the appeal), notwithstanding statutory language specifying that 'all of the expenses of the proceedings shall be paid by the applicant'. This decision was a reaffirmation of the 'American Rule' against fee-shifting and resolved a circuit split among the courts with respect to both the patent statute and its trademark analogue. The Supreme Court, after issuing its decision in Booking.com, then remanded that case for rehearing on the question of whether Booking.com should have been assessed USPTO attorneys' fees, presumably so that the lower court can reverse the award in view of Nantkwest.

The US Court of Appeals for the Federal Circuit espoused a broad view of standing in cancellation actions before the Trademark Trial and Appeal Board in Australian Therapeutic Supplies Pty Ltd v. Naked TM, LLC. 15 USC Section 1064 provides that a petitioner may seek cancellation of a registered mark if the petitioner 'believes he is or will be damaged' by registration of the mark. In this case, notwithstanding that the petitioner had contracted away its proprietary rights in unregistered marks, the court found that it had standing based on the fact that it had twice applied to register its unregistered mark and been refused on the basis of the mark being challenged.

Outlook

In the coming year, it may be anticipated that there will be decisions that clarify or confuse with respect to the extent of use in US commerce required to establish enforceable rights in a trademark, and that address the nature and extent of evidence that may be required to establish that a term is or is not generic for a particular good or service. It may be expected that the jurisprudence will continue to evolve on what constitutes persuasive expert evidence on apportionment of damages and surveys directed to secondary meaning as well as genericity and dilution.

There are no major legislative initiatives planned with respect to trademark law, but there are likely to be further changes in the rules of practice before the Trademark Office and the TTAB, particularly with respect to a proof of use of marks on the goods or services identified in applications and registrations, the level and nature of the third-party use that can impact on the strength of a mark or name, and an abbreviated procedure for securing cancellation of registrations on the basis of abandonment.

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