Description
Under the Lanham Act, use in commerce to support an application for registration and to support maintenance of a registration is not just “any old use”. It’s a specific type of use defined in the Lanham Act, and if the trademark owner cannot demonstrate such use, it may not be able to claim rights in a mark, whether for purposes of registration or to establish common law rights. The Trademark Trial and Appeal Board (TTAB) has issued numerous opinions in opposition and cancellation proceedings and the federal courts have issued numerous opinions discussing the issue of proper use in commerce under the Lanham Act while dissecting whether the proponent of trademark rights has properly demonstrated use in commerce to support those rights. However, the issue of demonstrating proper use in commerce to support an applicant’s or registrant’s rights begins way before a dispute occurs. As we have learned from review of the case law, an applicant’s or registrant’s declaration of use and supporting specimens may go unchallenged at the registration and/or maintenance stages because on their face, they appear to be acceptable. But later, when the marks are enforced, the rights on which the marks are based may unravel as the specimens and statements supporting the marks are examined in more detail and it is determined that they are not sufficient and/or appropriate to meet the standards under the Lanham Act. Accordingly, the brand owner may be left with no rights at all in the mark.
Through a discussion of the Lanham Act’s provisions regarding “use in commerce”, the rules and guidance put forth by the USPTO to adhere to the Lanham Act’s definition of “use in commerce” and the case law interpreting what is and is not proper “use in commerce”, and use analogous to trademark use, our authoritative panel will provide trademark counsel with guidance for establishing proper use of a mark in commerce under the Lanham Act for purposes of securing registration, maintaining registration and/or establishing priority under Section 2(d), along with best practices to implement going forward.
Listen as our authoritative panel examines what "use in commerce" is under the Lanham Act and for trademark registration purposes. The panel will discuss proper or acceptable evidence of use in commerce and offer best practices for demonstrating use in commerce.
Presented By
Mr. Gallagher has deep experience in trademark clearance, investigation, prosecution, as well as client counseling and management of domestic and international trademark portfolios. He also has significant experience assisting clients with trademark enforcement, opposition and cancellation proceedings; brand protection programs; trademark, unfair competition and false advertising disputes and litigation; internet domain name disputes and proceedings (UDRPs); and trademark licensing. He provides tailored advice for handling IP issues involving social media; IP due diligence and IP licensing; copyright counseling, registration, protection and litigation; Digital Millennium Copyright Act (DMCA) notice and take down procedures; and domain name acquisition.
Mr. Kagan practices in the firm’s Intellectual Property and Media Group. His practice includes litigation and counseling on trademark, false advertising, copyright, and defamation matters, and he has litigated cases in both state and federal court, before the Trademark Trial and Appeal Board and before the National Advertising Division of the Better Business Bureau. Since 2012, Mr. Kagan has been a member of the Trademarks and Unfair Competition Committee of the New York City Bar Association.
Ms. Tannen specializes in trademark and copyright law and practices in the firm’s global Trademarks, Unfair Competition & Copyrights Group. She is also a former member of the Trademark Public Advisory Committee (TPAC) of the United States Patent and Trademark Office. Ms. Tannen manages global trademark portfolios for domestic and multinational companies, advising on clearance, brand development and use, registration strategies, and enforcement, in such industries as pharmaceuticals, telecommunications, apparel, sports, food and beverages, and financial services. She also counsels companies regarding the use of their intellectual property in online content and social media and advises clients regarding copyright protection and use. Ilene is the author of the U.S. Chapter in Thomson Reuters’ well-regarded, go-to trademark resource Trademarks Throughout the World, Fifth Edition, wherein she addresses trademark registration practice and procedures under U.S. trademark law.
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This 90-minute webinar is eligible in most states for 1.5 CLE credits.
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Date + Time
- event
Tuesday, April 12, 2022
- schedule
1:00 p.m. ET./10:00 a.m. PT
- Use in commerce
- Under the Lanham Act
- In the rules put forth by the USPTO for purposes of securing trademark registration and maintaining trademark registration
- Demonstrating proper and acceptable evidence of use in commerce, and to avoid abandonment, based on select case law from the TTAB and the federal courts
- Analogous use to establish priority
- Bona fide intent to use in commerce to support a trademark application under Section 1(b)
- Best practices for demonstrating use in commerce
The panel will review these and other noteworthy issues:
- How can counsel improve the chances of the USPTO accepting a specimen of use?
- How can a rights holder establish priority in a mark before making use in commerce?
- How can a rights holder ensure that it is well positioned to defend a challenge about its priority date?
- Does an applicant really need to have a “bona fide” intention to use a mark in commerce before filing an intent-to-use application?
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