The United States trademark system is a “use” based system. Using your trademark bestows upon you the benefits of trademark ownership so long as you are the first to identify your particular goods and services in the geographical region in which you do business. Use is paramount and can even trump another user’s valid federal registration if your use is first in time.
Importantly, a live mark — one that is in use — must be associated with particular goods and services to remain viable. Once the association dies so does the mark. This vital relationship is underscored by various cases involving lawyers who filed trademark registration for uses, which the Patent and Trademark Office (PTO) considered fraudulent. One case in particular, Medinol v. Neuro Vasx, Inc., 67 U.S.P.Q. 2d 1205 (TTAB 2003) is worth summarizing:
Neuro Vasx Inc. (“Neuro Vasx”) filed a trademark application for NEUROVASX identifying “medical devices, namely, neurological stents and catheters,” based upon an intention to use the mark in commerce. When Neuro Vasx filed a Statement of Use for each of the goods in the application, the President of the company and its attorney declared that the information was truthful.
At some point after the PTO granted registration of NEUROVASX, Medinol Ltd. (“Medinol”) filed a petition to cancel the Neuro Vasx registration, alleging that at the time Neuro Vasx filed its Statement of Use, it had not used the mark on or in connection with stents, and had not, as of the date of the petition to cancel, commenced such use and were thus fraudulent.
In response, Neuro Vasx sought to amend its flawed registration by deleting “stents” from the list of goods. Medinol responded by asserting that the alleged fraud tainted the entire registration. The TTAB sided with Medinol and invalidated the mark in toto. Later decisions have supported the Board’s Medinol decision. See, e.g. Nougat London Ltd. v Carole Garber, TTAB 2003; Tequila Cazadores S.A. v. Tequila Centinela, S.A., TTAB 2004; Grand Canyon West Ranch, LLC v. Hualapai Tribe, 88 USPQ2d 1501 (TTAB 2008).
Although the Medinol decision has obvious lessons for lawyers filing trademark applications, it also imposes a duty on trademark owners to insure that their marks continue to identify the goods and services upon which their registrations are based. If you do not amend your trademark registrations to conform with current use of the mark, a third-party could potentially initiate a cancellation proceeding alleging fraud on the Trademark Office. In a worst case scenario, you risking losing the entire registration even if some of the registered uses are valid. If you believe you have a problem, promptly consult a trademark lawyer.
— Adam G. Garson, Esq.