Posts Tagged: "trademark use"

In order for rights in a trademark to persist, the mark must be used in commerce continuously. Wallack v. Idexx Labs., Inc., No. 11CV2996-GPC(KSC), 2015 WL 5943844, at *4 (S.D. Cal. Oct. 13, 2015). Abandonment of a mark is, therefore, an affirmative defense to a trademark infringement claim. One form of trademark abandonment is non-use of the mark. A second form of trademark abandonment is uncontrolled or “naked” licensing of one’s trademark. The policy behind prohibiting uncontrolled licensing is reflected in 15 U.S.C. § 1127, which states that “[a] mark will be deemed abandoned … [w]hen any course of conduct of the owner, including acts of omission as well as commission, causes the mark to …  lose its significance as a mark.” 15 U.S.C. § 1127 (emphasis added); Already LLC v. Nike Inc., 568 U.S. 85, 99 (2013). “Naked licensing is an uncontrolled licensing of a mark whereby the licensee can place the mark on any quality or type of goods or services, raising a grave danger that the public will be deceived by such a usage.” Doeblers’ Penn. Hybrids, 442 F.3d at 823 (internal quotations and citations omitted). The way to protect against this danger to the consuming public is to require the licensor to actively police use of the licensed mark.

During the St. Louis Blues’ improbable run to their first Stanley Cup, the team found itself with an almost equally improbable new victory song—Laura Branigan’s 1982 disco-pop hit, “Gloria.” In early January 2019, five Blues players were in Philadelphia watching the Eagles-Bears NFL wild-card playoff game at a local dive bar, Jacks NYB. The song “Gloria” came on and a patron latched on to it, urging the bar to keep playing it during every commercial break. A few beers and an Eagles victory later, the bar’s chants of “Play Gloria!” have transformed it into a living meme. The Blues players brought the song into the locker room and out onto the ice, and the legend grew like a playoff beard through their epic Cup run. Now, after the ticker-tape has settled, Jacks NYB claims it owns trademark rights to the phrase “Play Gloria!”; they not only filed trademark applications for the phrase, but sent demand letters asserting their rights. It’s a move that feels a little too straight out of the TV show It’s Always Sunny in Philadelphia. And like most other IP disputes that manage to reach the sports-channel crawl, it is rooted in some basic misunderstandings about the nature of trademarks.

Trademarks must be continuously used to be enforceable. If you stop using them, they are lost. This also means you should have evidence to prove use of your trademark. If your use is challenged, you will have to prove that you’ve been using your trademark, and you need the correct evidence. This just happened to McDonalds in Europe. Even though they were using the BIG MAC trademark, they didn’t have the correct evidence to prove that they had continuously used that trademark for the previous five years, and they lost their European registration.  A truly shocking result.