Tag Archives: TTAB

Specimen Showing Display of a Trademark on a Door Insufficient to Show Use of a Service Mark

On February 23, 2017, in a non-precedential opinion, the TTAB affirmed a PTO refusal of Republic National LLC’s service mark based upon the failure of its specimen to demonstrate use in connection with the covered services.

Republic sought to register the REPUBLIC NATIONAL mark for a variety of real estate investment services.  As specimens, Republic National submitted two digital photographs of the front door of the facility where it provides its services. Continue reading

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One Sale Meets the Lanham Act’s “Use In Commerce” Requirement

On November 14, 2016, the Federal Circuit held that a single sale of two hats is sufficient to meet the Lanham Act’s “use in commerce” requirement for trademark registration, potentially contravening longstanding jurisprudence on “token use.”

Christian Faith Fellowship Church began selling caps and shirts emblazoned with the phrase “Add A Zero” in January 2005.  In February of the same year, the Church made one sale of two ADD A ZERO-marked hats to an out-of-state resident, and in March, the Church applied for federal registration of the ADD A ZERO mark.  Continue reading

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Foreign Trademark Owner May Pursue Unfair Competition and Trademark Cancellation Claims Against Confusingly Similar Mark in U.S.

In one of the few appeals court cases addressing the extraterritorial reach of the Lanham Act, the Fourth Circuit has held that a foreign trademark owner who has not used his trademark in the U.S. may pursue a false association, false advertising, and trademark cancellation claim against the owner of the same mark in the United States.

Bayer Consumer Care AG (“BCC”) owns the trademark FLANAX in Mexico and has sold pain relievers there under that mark since the 1970s. BCC’s FLANAX brand is well known in Mexico, but BCC has never marketed or sold its FLANAX products in the United States.

Belmora LLC owns the FLANAX mark for pain relievers in the United States and has used it here since 2004. Belmora’s packaging (left) closely mimicked BCC’s Mexican packaging (right).

flanax-naproxeno flanax-syntex

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