[27] See 15 U.S.C. §§ 1114, 1127. [28] 15 U.S.C. § 1115(a). [29] 15 U.S.C. § 1121(a).

Suppose that you have obtained a U.S. trademark registration for your trademark on goods or services for your business. Can your trademark registration be cancelled with the U.S. Patent and Trademark Office based on it being invalid? Can you file anything to strengthen your trademark registration against invalidation? The answer is YES! if the trademark has been in continuous use for five consecutive years subsequent to the date of registration.A trademark registration that was obtained on the Principal Register “… shall be prima facie evidence of the validity of the registered mark and of the registration of the mark … but shall not preclude another person from proving any legal or equitable defense or defect …” See 15 U.S.C. § 1115(a) (Emphasis Added). This means that it is less burdensome to prove the invalidity of a trademark registration. For example, under U.S. trademark law, a petition for cancellation may be filed at any time to challenge the trademark registration as being invalid. For trademark registrations within five years, the grounds for cancellation of a trademark registration include the likelihood of confusion, abandonment, dilution, deceptiveness, and whether the mark is merely descriptive or has become generic or functional. See15 U.S.C. §1064.Is there anything that the trademark owner can do to make it more difficult for a trademark registration to be invalidated? Yes, the owner of a trademark registration on the Principal Register may file for “incontestable” status if the trademark has been in continuous use for five consecutive years subsequent to the date of registration.Under 15 U.S.C. § 1115(b),“[t]o the extent that the right to use the registered mark has become incontestable under section

This is what Freelancer objected to.The district court found that Freelancer lacked the required likelihood of success. Upwork argued that its use of “freelancer” was a fair use under 15 USC 1115(b)(4). The district court said that the fair use defense is applicable in instances where defendants’ alleged infringing use of plaintiff’s mark “is a use, otherwise than as a mark … of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin.”

r years.8Costco avoided detection from Tiffany’s trademark policing procedures because Costco did not use the TIFFANY mark to sell the same diamond rings online.9According to Tiffany, “[t]here are now hundreds if not thousands of people who mistakenly believe they purchased and own a Tiffany engagement ring from Costco.”10 On February 14, 2013, Valentine’s Day, Tiffany filed its complaint against Costco, alleging eight causes of action including trademark infringement, federal false designation or origin and unfair competition, dilution, and counterfeiting under the Lanham Act, as well as violations of New York General Business Law and New York common law trademark infringement.11 Tiffany also noted that its marks have achieved incontestable status.12 Costco answered on March 8, 2013, denying infringement and seeking a judgment to declare Tiffany’s mark invalid.13Costco counterclaimed with three affirmative defenses: 1) the TIFFANY mark was only used to describe the products under 15 U.S.C. § 1115(b)(4); 2) the TIFFANY mark has become generic for a multi-prong, solitaire ring setting; and 3) Tiffany is barred by the New York statute of limitations for complaining of acts that occurred before February 14, 2007.14 To support its primary affirmative defense that the TIFFANY mark is generic for a multi-prong solitaire ring, Costco submitted an exhibit with its answer that contained descriptions from various sources to demonstrate the pervasiveness of the use of the TIFFANY mark throughout the jewelry industry.15 Costco submitted another exhibit to further demonstrate that it did not infringe the TIFFANY mark because it sold unbranded rings in plain beige gift boxes, instead of Tiffany’s blue boxes, and also provided the customer with a Costco appraisal sales document that did not bear the TIFFANY mark.16 Although Costco denies infringing Tiffany’s mark, Costco did not specifically address Tiffany’s other causes of action, such as counterfeiting, and asserted genericism as a blanket defen

In so doing, the High Court made its own "lasting impression" on trademark infringement analysis. 15 U.S.C. § 1115(b)(4) provides the trademark fair use defense to a party whose "use of the…name, term, or device…charged to be an infringement is a use, otherwise than as a mark…of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party." [1](Emphasis added.)

By contrast, the more commonly known concept of copyright fair use provides a limited right to use portions of copyrighted material, such as the contents of a book or a song, without authorization from the copyright owner for purposes such as educational use or parody.In this case, in response to a cease and desist letter from Lasting, KP sought a declaratory judgment that its use of the term “microcolor” did not infringe on Lasting’s “Micro Colors” trademark. Lasting counterclaimed, claiming trademark infringement by KP. At issue was whether KP, by raising the statutory affirmative defense of fair use under the federal Lanham Act, 15 U.S.C. § 1115(b)(4), had the burden of showing that its fair use did not create any likelihood of confusion with Lasting’s mark. The Court noted that a plaintiff in a trademark infringement action must show likelihood of confusion before an affirmative defense is even required.

t Concepts sought to do.Unpersuaded by the rest of Chutter’s arguments,16 the Federal Circuit reversed the Board’s cancellation of Great Concepts’ registration, and remanded the case so that the Board can consider whether to declare that Great Concepts’ mark does not enjoy incontestable status and to evaluate whether to impose other sanctions on Great Concepts or its attorney.What This Means for YouThe Federal Circuit’s opinion in Great Concepts confirms the Federal Circuit’s power to reign in its agencies when they exceed their authority, regardless of how long their actions have been ultra vires. The opinion also joins the recent trend of Federal Circuit opinions granting challenges to PTO administrative decisions, suggesting that these types of challenges are becoming more effective tools for obtaining relief in intellectual property disputes.1 No. 22-1212 (Fed. Cir. Oct. 18, 2023) (“Op.”).2Id. at 3.3In re Bose Corp., 580 F.3d 1240, 1242 n.1 (Fed. Cir. 2009).4 15 U.S.C. § 1065.5See 15 U.S.C. § 1115(b).6See 15 U.S.C. § 1064.7 Op. at 7.8 15 U.S.C. § 1064 (emphasis added).9W. Union Tel. Co. v. Hansen & Rowland Corp., 166 F.2d 258, 260–61 (9th Cir. 1948) (quoting Webster’s New International Dictionary, 2d ed. at 1682).10 Op. at 12.11Id.12Id. at 13.13Id. at 14.14See id. at 14–17.15See Duffy-Mott Co. v. Cumberland Packing Co., 424 F.2d 1095 (C.C.P.A. 1970).16 Op. at 17–21.

er curiam) (unpublished).7See Nintendo of Am., Inc. v. Aeropower Co., 34 F.3d 246, 250 (4th Cir. 1994).8See Am. Rice, Inc. v. Ark. Rice Growers Coop. Ass’n, 701 F.2d 408, 414 n.8 (5th Cir. 1983).9Trader Joe’s Co. v. Hallatt, 835 F.3d 960, 969 (9th Cir. 2016) (alteration in original).10 McBee v. Delica Co., 417 F.3d 107, 111 (1st Cir. 2005).11Id.12Hetronic, 10 F.4th at 1036.13Id. at 1037.14Id. at 1030.15Id. at 1038.16Id. at 1045–46.17Petition for Writ of Certiorari at (I), Abitron Austria GmbH v. Hetronic Int’l, Inc., No. 21-1043, 2023 WL 4239255 (U.S. Jan. 2, 2022), 2022 WL 253018, at *(I).18561 U.S. 247 (2010).19 79 U.S. 325 (2016)20138 S. Ct. 2129 (2018).21141 S. Ct. 1931 (2021).22Abitron, 2023 WL 4239255, at *4 (quoting RJR Nabisco, 579 U.S. at 335, 337).23Id. (first quoting RJR Nabisco, 579 U.S. at 336; then quoting Nestlé, 141 S. Ct. at 1936).24Id.25Id.26Id. at *5 (quoting RJR Nabisco, 579 U.S. at 337).2715 U.S.C. §§ 1114, 1125(a) (2018).28Abitron, 2023 WL 4239255, at *4 (quoting 15 U.S.C. §§ 1115(1)(a), 1125(a)).2915 U.S.C. § 1127.30Abitron, 2023 WL 4239255, at *5 (first citing Morrison, 561 U. S., at 262–263; then citing RJR Nabisco, 579 U.S. at 344). The Court elaborated on this point with the observation that “[i]f an express statutory reference to ‘foreign commerce’ is not enough to rebut the presumption, the same must be true of a definition of ‘commerce’ that refers to Congress’s authority to regulate foreign commerce. That result does not change simply because the provision refers to ‘all’ commerce Congress can regulate.” Id.31Id.32Id. at *6.33Id. at *9 (quoting 15 U.S.C. § 1127).34That split is summarized in 4 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 23:11.50 (5th ed.).

Instead, under the Lanham Act a registered mark is prima facie evidence of both the validity of the mark and the right to use it in commerce in connection with the goods or services specified in the registration. See 15 U.S.C. § 1115. That can be helpful in a number of situations, including establishing ownership of a mark and preventing the registration of other similar marks in the specified fields.

15 USC 1115(b)(4) provides that the use of a registered term is not trademark infringement if it is used “otherwise than as a mark” (meaning it is not made to look like the registered trademark or any registered trademark) and it is descriptive of, and used fairly and in good faith, to describe your goods or services.TheNorthern District of California in Freelancer International Pty. Ltd. v. Upwork Global, Inc. [20-cv-06132-SI], recently provided some helpful guidance on what qualifies as a permissible descriptive use.