No Trademark, No Problem
15 Pages Posted: 17 Oct 2019 Last revised: 11 Sep 2020
Date Written: 2017
Does the Lanham Act permit a foreign business that has neither used nor registered its trademark in the United States to sue the owner of a U.S. trademark for its use of the same mark in the U.S.? A recent case from the Court of Appeals for the Fourth Circuit addressed this consequential question. In Belmora, LLC.v. Bayer Consumer Care A G, the Court of Appeals surprised the legal community and answered this question in the affirmative, reversing the district court's decision to reject the trademark claim because it was unsupported by a federally protected U.S. trademark.
The Belmora decision has received considerable attention. What has thus far escaped much notice by commentators is the treatment of this dispute below by the Trademark Trial and Appeal Board ("TTAB"). There, the TTAB reached a similar result as the Fourth Circuit. The TTAB ordered the cancellation of the U.S. registered mark for a misrepresentation of source, finding that a cancellation petition need not be supported by a protectable mark.
This article will evaluate the TTAB's receptivity to claims in cancellation proceedings by parties that have neither used nor registered their marks in the U.S. The TTAB has resolved some interesting cancellation proceedings, some of which have extended trademark protections to parties that do not have a mark protectable in the U.S. This article will consider how these types of cases have fared in the courts and in the TTAB, and why the TTAB has accepted certain legal claims that Article III courts have not. Finally, this article will consider the implications of the TTAB's acceptance of these kinds of claims for jurisdiction in Article III courts.
Keywords: trademark law, Lanham Act, Trademark Trial and Appeal Board, cancellation proceedings
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