Developing U.S. Case Law Threatens Validity Of Trademark Registrations

Companies must promptly review their existing trademark portfolio of registrations and applications with regard to "use" issues, including those based on foreign registrations.

A recent line of administrative and federal court decisions jeopardize the validity of countless U.S. trademark applications and registrations. Companies that have spent many decades and millions of dollars on developing and maintaining their brands could lose valuable rights in those brands.

Use-based trademark applicants and trademark registrants often broadly describe the goods and services on which the mark is being used, including goods and services that technically may not be in use with the mark. Provided that the mark was in use on some goods or services in the application or registration, the U.S. Patent and Trademark Office generally treated such misstatements as harmless and liberally allowed amendments of registrations.