Update! Beware When Specifying the Goods Used with Your Trademark
By: DEAN R. KARAU
March 2007
Last month, Trademark Topics warned of the very real peril to your U.S. trademark registration if you are not using your mark on all of the goods or services you say you are at the time you sign and submit declarations to the United State Patent and Trademark Office (“U.S.P.T.O.”). (See Beware When Specifying the Goods Used with Your Trademark, or Risk Losing Your Trademark Registration Later.
A January 2007 case from the Trademark Trial and Appeal Board (“T.T.A.B.”) has now expanded the scope of the T.T.A.B.’s earlier rulings. You can even lose your application before it matures to a registration if you make a mistake about the goods or services with which you are using your mark at the time you file the application.
In Hurley International, LLC v. Volta, Hurley opposed Volta’s application to register his mark, asserting that Volta had never used the mark in commerce in connection with all of the services listed in his use-based application. The T.T.A.B. agreed and refused to register the mark, saying that Volta signed a declaration attesting to his use when he knew or should have known that he had not used the mark in connection with all of the services. The T.T.A.B. found unpersuasive Volta’s assertions that he misunderstood the requirements for a use-based application, that he was not represented by legal counsel, and that he was suffering health problems.
Thus the T.T.A.B. continues to apply a bright-line, strict liability standard – whether you fraudulently claimed use of your mark on all of your goods or services, or whether you merely were mistaken about your use, the results are the same. If someone opposes your use-based application and proves that you were not using your mark as you averred, your application will be refused registration. Similarly, if someone petitions to cancel your registration and proves that you were not using your mark as you averred, your registration will be canceled.
Gone are the days when you could make an educated guess about how and when you began using your mark.
Before filing a used-based application and at the time you sign any declaration, you must thoroughly investigate your use of your mark, paying close attention to the details relating to how you are using your mark.
The consequences of not being careful are severe – the T.T.A.B. could refuse registration of your trademark or cancel your entire trademark registration.