Archive for the ‘Business Law’ Category



This blog, part 1 of a 2-part series on the cancellation of federally registered trademarks, focuses on the cancellation of registered trademarks by operation of law.  The maintenance of federally registered trademarks should be part of a strategic planning approach for protecting and enhancing the value of intellectual property rights obtained through hard work, a dream, and perseverance.   For registered marks that are still being used in commerce, failure to renew these marks may well have a detrimental impact on registered mark’s owner strategic business plans including its exit strategy.  This blog discusses: I) the importance of trademark registration renewals; II) the USPTO’s registered trademark renewal schedule; and III) recommendations for monitoring registration due dates.

I. Background on Registered Trademarks & the Ramifications of Non-Renewal

Federally registered trademarks are valuable, monetizable business assets for even small businesses because they promote brand recognition in the minds of target consumers/businesses.   A registered mark may be leased, sold, and even used as collateral. Registered marks help establish the mark owner’s credibility amongst its customer base, whether that base is comprised of consumers or other businesses.  Also, registered marks allow the mark owner to use and enforce the mark throughout the country in which it is registered.  For the United States, the “reach” of registered trademarks includes all 50 states and U.S. territories.

Securing a registered trademark is no small feat.  That’s why registered mark owners need to understand that mark registration does not automatically result in “forever” associated rights under the law.  Continued registration status is contingent upon the periodic renewal of the mark with the United States Patent & Trademark Office (and/or the foreign office(s) in countries where the mark has been registered).  Failure to renew the registered mark will result in cancellation of the mark.  The only way to get the mark “back” is to submit a new application which may or may not be approved.

Failure to renew a registered mark can have serious ramifications including a decrease in a business’s valuation due to the loss of registration status; failure to procure the same registered mark upon submission of a new application; loss of brand awareness and client loyalty; and greater difficulty for a company to protect its goods or services against piracy or counterfeiting.

If a registered trademark loses its registration status and cannot “regain” registration status, the user of the mark will need to depend on common law rights which are generally more difficult and costly to enforce.   Common law trademarks generally only allow the owner to sue for infringement in state court.  Also, whereas federally registered trademark owners may seek injunctive relief, common law trademark owners are generally restricted to receiving monetary damages. Finally, lack of a registered trademark(s) can also interfere with a company’s growth strategy across state lines including growing a franchise.

Once a mark is cancelled, anybody may file an application to register the mark through the USPTO (or other relevant jurisdiction).  This does not mean that the application will actually evolve into a registered mark since the application will be examined on its own merits.  Theoretically, the former owner of the registered mark may also still have common law priority rights in the mark.

II. The USPTO’s Trademark Renewal Schedule

The owners of a registered trademark must periodically renew their registered trademark to maintain the mark’s registered status.  This process of “renewing” a registered trademark is known as post-registration maintenance.  Failure to do so will result in cancellation of the mark. Trademark law imposes the following renewal deadlines:  between the 5th and 6th years after the registration date though a Section 8 Declaration, the 9th and 10th years after the registration date, and every 10 years thereafter.  The latter two types of renewals involve the filing of a combined Section 8 and Section 9 Declaration. The Section 8 Declaration actually refers to mark maintenance while the Section 9 Declaration refers to mark renewal.

It is important to note that the registrant is asserting that the mark is indeed being used in commerce when submitting the declarations.  Additionally, the registrant must amend the original description of goods and/or services to delete any goods/services no longer being sold or offered in commerce.  Specimens showing use of the mark must also be submitted. In other words, Section 8/9 Declarations require something more than a statement “we’re good to go.” If the registered mark is no longer being used in commerce with at least one of the registration’s specified goods/services, the registrant should not file a Section 8/9 Declaration.

The USPTO provides a 6-month grace period after each of the deadlines for filing the renewal for an additional filing fee.  Failure to at least file the required declaration within the 6-month grace period will result in cancellation of the registered mark.  The registrant may file a petition to revive the cancelled mark within 2 months of the USPTO’s notice of cancellation.  The petition must be accompanied by all necessary declarations and fees.  If more than 2 months have passed since the USPTO’s cancellation notice, a trademark owner will need to file a new application for the same mark.  There is no guarantee that the new application will evolve into a registered mark.

If a registered mark is subsequently cancelled by operation of law (i.e., for failure to renew), the effective cancellation date stated in the USPTO’s record’s publicly viewable records will be the last day immediately preceding the start of the 6-month grace period associated with the renewal period.

III. Steps a Registered Mark Owner Should Take to Monitor Renewal/Maintenance Due Dates

The commentator advises her trademark/IP clients to do the following to not only maintain their registered trademarks but also to enhance their value and the value of all of the registrant’s other intellectual property:

  1. For a new registrant, calendar the due date for the 5/6 year Section 8 Declaration. Ideally, file the documentation on the 5th anniversary date and no later than 6th year anniversary date even though the USPTO does offer a 6-month grace period following the 6th year anniversary date .  If our law office obtained the registration on behalf of the registrant, our office also calendars the due dates.  It is recommended that the required documentation be filed by an attorney, preferably the original attorney of record to ensure that any required amendments to the original description of goods and services are made.
  2. If a Section 8 Declaration 8 is filed as above, calendar the 10th anniversary date and the last date to timely file the Section 8/9 Declarations if the registrant is going to rely on the 6-month grace period.  Keep calendaring the renewal days in 10 year increments.
  3. We encourage all registrants to establish an IP portfolio which contains all government-granted IP rights (patents, registered trademarks, and registered copyrights) wherein the portfolio is maintained by a designated authorized representative for business registrants. Such organized records may come in very handy for those businesses which are seeking investors, potentially involved in an M&A, establishing a growth strategy, or considering selling/licensing their IP assets.  It is noted that issued utility patents must also be maintained periodically. Any such patent owner also needs to calendar patent maintenance due dates.
  4. If trademark rights are assigned by the registrant, the assignee should plan to take charge of all renewal dates and calendar the due dates.

In Need of Legal Counsel on Trademark Matters?

Trademark law is a complex area of the law.  Contact Susan at 305-279-4740 for a complimentary consultation on trademark law matters as well as matters related to patents, copyrights, and trade secrets.



© 2023 by Troy & Schwartz, LLC





In Trinity Info Media, LLC, et al. v. Covalent, Inc., the Federal Circuit Court of Appeals (CAFC) held that the patent claims were directed to an abstract idea of “matching users who gave corresponding answers to polling questions.” As such, they do not involve an inventive concept under § 101 and are patent ineligible.  The holding itself is not surprising based on previous case law in this post-Alice world.  The precedential decision is noteworthy because it addresses claim construction in the context of a 12(b)(6) motion to dismiss a patent infringement lawsuit on § 101 grounds.  This blog reviews the CAFC’s decision and ends with a discussion of the following two topics:

  1. Could the invalidated claims have been written differently to avoid invalidation?
  2. How does the proposed Patent Eligibility Restoration Act of 2023 address the § 101 boondoggle created by the courts?


Trinity sued Covalent for patent infringement asserting two patents –  nos. 9,087,321 and 10, 946,685.   Both patents are directed to a poll-based networking system that connects users based on similarities as determined through poll answering while providing real-time results to the users.   The later patent contains additional disclosures discussing progressive polling for ecommerce systems.

Covalent filed a motion to dismiss Trinity’s amended complaint, arguing that the claims asserted against it are invalid under 35 U.S.C. § 101.  The District Court for the Central District of California agreed with Covalent, finding that the claims do not improve computer functionality but instead use “generic computer components as tools to perform the functions faster than a human would.”

Trinity appealed the decision to the Federal Circuit, arguing that the dismissal was improper because the district court did not conduct claim construction and discovery before analyzing the claims under § 101 according to the Alice framework  articulated by the U.S. Supreme Court in Alice Corp. v. CLS Bank, Intl.  Citing its previous decisions, the CAFC disagreed, explaining that “[a] patentee must do more than invoke a generic need for claim construction or discovery to avoid grant of a motion to dismiss under § 101.  Instead, the patent holder must “propose a specific claim construction or identify specific facts that need development and explain why those circumstances must be resolved before the scope of the claims can be understood for § 101 purposes.”   Slip opinion at 7. Because Trinity did not identify a proposed claim construction or specific facts to be discovered that would change its analysis, the CAFC proceeded with analyzing Trinity’s asserted claims under the Alice framework.

Step 1 of the Alice Framework – The Claims are Abstract

In finding that the asserted claims are abstract, the CAFC stated: “A telltale sign of abstraction is when the claimed functions are mental processes that can be performed in the human mind or using a pencil and paper.   For example, in SAP Am., Inc. v. InvestPIC, LLC, the CAFC previously held that “[s]electing certain information, analyzing it using mathematical techniques, and reporting or displaying the results of the analysis . . . is all abstract.”   Slip opinion at 9.  Accordingly, Trinity’s independent claims are focused on “collecting information, analyzing it, and displaying certain results” which places them in the “familiar class of claims directed to patent ineligible material.”  Citing Elec. Power Group, LLC v. Alstom S.A., et al.  Slip opinion at 10.  Not surprisingly, the CAFC opined that “[a] human mind could review people’s answers to questions and identify matches based on those answers” and found that the independent claims of both patents are directed to an abstract idea.  As for the dependent claims, they merely add trivial variations of the abstract idea.

Trinity argued that “humans could not mentally engage in the same claimed process because “they could not perform ‘nanosecond comparisons and aggregate ‘result values with huge numbers of pools and members, nor could they select criteria using ‘servers, storage, identifiers, and/or thresholds.’” The CAFC noted that these arguments are not tethered to the asserted claims which do not require “nanosecond comparisons” or aggregating “huge numbers of pools and members.”   Slip opinion at 13.

In rejecting Trinity’s arguments, the CAFC cited its previous decisions where claims were found to be directed to a “forbidden” abstract idea when the claims required generic computer components or required operations that a human could not perform as quickly as a computer.   Moreover, Trinity’s claims relied on generic computing terms such as “data processing systems, processors, and memory.”   And even though Trinity emphasized the invention was intended for use with a hand-held device/mobile phone, such a device was viewed by the CAFC as being no different from a generic computer.  Slip opinion at 10.

Step 2 of the Alice Framework –  The Claim Elements Do Not Transform the Claim into a Patent-Eligible Claim

After finding that Trinity’s asserted claims are abstract, the Court proceeded with the second step of its Alice analysis. Here the CAFC concluded that the asserted claims do not ‘transform’ the claimed abstract idea into a patent-eligible claim.  In particular, the Court took issue with Trinity’s conclusory statements that the prior art did not include, “alone or in combination certain features, including (1) real-time matching based on progressive polling, (2) using match servers and a match aggregator, (3) using a mobile device, (4) displaying matches reviewable by swiping, and (5) using a mobile application. Under its precedent, the CAFC’s policy is to disregard conclusory statements under a Rule 12(b)(6) motion.  Slip opinion at 10.

The CAFC was left with viewing the claim limitations individually and in an ordered combination.  The Court concluded that the asserted claims do not add an inventive concept that would be “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.”  Trinity’s inventiveness arguments were found to merely reflect improved speed inherent with applying the abstract idea using a computer, or in this case a hand-held device.  Nor is there anything inventive in the ordered combination of elements because the asserted claims are organized in an expected was – receiving user information, asking the user questions, receiving answers, and identifying and displaying a match based on those answers.  Slip opinion at 18.  Nor did the CAFC find that the use of “multiple processors, match servers, unique identifications and/or match aggregator” transformed the abstract idea into an inventive concept in the application of an abstract idea.   The CAFC emphasized that has “ruled many times” that “invocations of computers and networks that are not even arguably inventive are insufficient to pass the test of an inventive concept.” Id.


Could the Claims Have Been Written in Such a Way So as to Overcome the § 101 Rejection?

It is not surprising that Trinity’s patents were invalidated in our post-Alice patent invalidation environment.  This environment favors infringers who refuse to pay a licensing fee to patent owners and instead pursue patent invalidation through the courts or through administrative proceedings involving the Patent Trial and Appeal Board (PTAB).

Are all computer-based inventions at risk?  Is the current environment fair for patents that have passed the USPTO’s own strict requirements which are now based on judicial exceptions and case law?  For example, patent no. ‘321 was granted in 2015 or a short time after SCOTUS’s infamous holding in Alice Corp v. CLS Bank, Intl.  Patent no. ‘685 was granted in 2021 after the USPTO had developed its first § 101 guidance for its examiners in 2019.   But the CAFC found that both of Trinity’s patents were invalid under its case law involving its and the U.S. Supreme Court’s judicially-created exceptions.

The patents’ independent claims used the words “comparing” and “generating,” two words that are trigger points for the courts to find a § 101 problem.  Merely making conclusory statements that the method “is done on a computer/process” and therefore is done in the “human mind” will not overcome a § 101 rejection.   Under current case law, this is so even if the method could never be practically performed by the human mind.  That is, the courts have not cared if length of time required by a human to achieve the same results would totally defeat the invention’s utility.

Drafting claims for a computer-based invention is no easy task.  Here, the invention did not improve the functioning of a computer to overcome the § 101 rejection.   The § 101 issue in Trinity may have been avoided if the independent claims had been drafted to emphasize how the computer system’s method incorporated the unique ID or claimed just how the likelihood of a match is determined.  Both approaches would have required reciting the steps of an algorithm.

Unfortunately, even with these changes, it is likely that the CAFC would have reached the same conclusion.  The CAFC and other courts have routinely found ineligibility by finding that: 1) the claims are not directed to a technological improvement (slip opinion at 14); and/or 2) the invention merely uses generic computers components as tools to perform functions faster than a human would.  Slip opinion at 5.   Trinity’s inventions are not directed to a technological improvement of the generic computer’s functioning.   Also, given enough time, humans could perform the matching steps no matter how impractical the time commitment.

And this takes us to Congress’s attempt to correct what the judicially-created exceptions to patent eligibility under § 101 have done to thwart innovation, encourage infringement, and hurt the ability of U.S. companies to compete globally.

The Patent Eligibility Restoration Act of 2023 – How It May Fix the § 101 Invalidation Landscape

Thankfully, there is some relief on the horizon through the bipartisan efforts of Senators Thom Tillis and Chris Coons.  On June 22, 2023, these Senators introduced their Patent Eligibility Restoration Act of 2023. This legislation is intended to bring clarity to U.S. patent law by eliminating many of the judicial exceptions to patent eligibility and providing clear guidance on determining patent eligibility especially in areas such as medical diagnostics, biotechnology, personalized medicine, AI, 5G, and blockchain.  The proposed legislation states that the following inventions shall not be eligible for patent prosecution:

  • A mathematical formula that is not part of an invention comprising a useful process, machine, manufacture, or composition of matter;
  • A mental process performed solely in the mind of a human being;
  • An unmodified gene, as that gene exists in the human body;
  • An unmodified natural material, as that material exists in nature; and
  • A process that is substantially economic, financial, business, social, cultural, or artistic.

However, the legislation includes an important exception:

The processes described in 5 above shall not be excluded from eligibility for a patent if the process cannot be practically performed without the use of a machine (including a computer) or manufacturer. 

The legislation is intended to stop the courts from invalidating patents under § 101 while ignoring the elements of the claimed invention and/or treating them as conventional.  If enacted, the eligibility focus by the USPTO and the courts will be far more focused on the patentability factors involving sections 102 (novelty), 103 (non-obviousness), and 112 (definiteness) of the Patent Act which in the commentator’s opinion is where the focus should be.

Perhaps had this legislation already been in place, Trinity’s patents would not have been invalidated because the invention clearly cannot be practically performed without a computer.   On the other hand, one factor that will likely be litigated with the new legislation is what exactly constitutes “practically performed.”  Regardless, this legislation is a huge step forward, something that has been needed for a long time as the courts have effectively taken over Congress’s patent law regulatory role through judicially-created law.

Have a question on obtaining a U.S. or foreign patent or enforcing your rights as a patent owner? Contact us at 305-279-4740.  And be sure to check out our other patent law blogs at



© 2023 by Troy & Schwartz, LLC






Take Home Points

  1. A distinctive registered trademark can become generic over time meaning it is no longer protectable as a registered mark. Such a mark can also be subject to cancellation.
  2. Ceasing the opportunity to overcome negative press can alleviate bad press in the court of public opinion.

In 1978, the trademark TACO JOHN’S  was registered with the USPTO.  In 1989, the owner of the TACO JOHN’S mark received a registered mark for Taco Tuesday (Reg. No. 1572589).   In 2019, the current owner of both marks, Spicy Seasons, LLC, sent a cease-and-desist letter to Freedom Edge’s Brewery Co. for using the term “Taco Tuesdays” to advertise a taco truck that parks outside the brewery once a week.   Spicy Seasons had every right to do so as the owner of the registered mark, but Freedom Edge did not keep the matter private. Soon Facebook became the forum for litigating the matter in the court of public opinion via social media.

Then in March 2023, Taco Bell IP Holder, LLC, the owner of the TACO BELL mark and a competitor of Taco John’s restaurants, filed a petition with the Trademark Trial & Appeal Board (TTAB ) to cancel the Taco Tuesday mark on the grounds that the mark had become generic.  The cancellation petition is tongue-in-cheek and quite humorous.  For example, paragraph C under the Preface states: “The Registration potentially subjects Taco Bell and anyone else who wants to share tacos with the world to the possibility of legal action or angry letters if they say “Taco Tuesday” with express permission from the Registrant – simply for pursuing happiness on a Tuesday.  This violates an American idea: “the pursuit of happiness.”

Rather than participate in the cancellation proceeding, this month Spicy Seasons filed a Notice of Abandonment of the TACO TUESDAY mark with the TTAB, effectively ending the cancellation proceeding.  This business decision makes good sense for two reasons.  First, there was considerable negative press about Taco John’s “beating” up on small proprietors.  In doing so, Spicy Seasons seized on the opportunity to make amends in the arena of public opinion by announcing it was abandoning the mark and giving a substantial donation to Children of Restaurant Employees.  It also challenged Taco Bell to do likewise since they will not have to spend further legal fees on the cancellation proceeding.

Second and from a legal perspective, “TACO TUESDAY” has suffered from genericide because it has become too well known to still be identified with Taco John’s.  It is not unusual for an initial distinctive registered mark to become generic and lose its registered trademark status over time.   Two examples are:  DRY ICE (Originally a trademark of Dry Ice Corporation of America) and  ESCALATOR (Originally a trademark of Otis Elevator Company).   Once a mark becomes generic, it risks losing its ability to enforce its mark.  Not only has the term “Taco Tuesday” been used frequently across the country but the mark was also featured in the 2014 “The Lego Movie.”

Also note that the USPTO will not register a generic mark.   For example, a local store just calling itself “Boutique” for clothes would have no trademark rights to that identifier. The rationale for refusing the registration of generic marks is: since they describe common terminology for specific industries, generic terms are free to use by any brand owner in its development, marketing, promotion activities, etc.

In conclusion, Spicy Seasons chose to officially abandon its now-generic TACO TUESDAY mark.  Had  Spicy Seasons filed trademark infringement lawsuits, defendants could have sought cancellation of the mark by the court on generic grounds.

Waffle Wednesday anyone?

Have a question on obtaining a registered trademark nationally and/or internationally or enforcing your rights as a registered trademark owner? Contact us at 305-279-4740.  And check Susan’s reviews at  Be sure to check out our other trademark law blogs at


© 2023 by Troy & Schwartz, LLC






The blog provides a detailed analysis of the U.S. Supreme Court’s June 29, 2023 decision in Abitron Austria v. Hetronic International, a case which involves international trademark rights.   Justice Sotomayer’s concurrence, reading more like a dissent, is, in this commentator’s opinion, the correct legal application of the Lanham Act.

Quick Overview of Abitron’s Take Home Points:

  1. More than ever before, trademark owners will likely need to protect their marks abroad by registering the mark in the countries in which the goods/services will be sold and/or even manufactured.
  2. Contracts between U.S. companies and foreign parties need to clearly specify ownership and use of the relevant IP globally to clearly provide a contractual basis for trademark infringement liability related to conduct outside of the U.S.


U.S. trademark law is governed by the Lanham Act (“Act”).  The Lanham Act was enacted at a time when international commerce was far less common than it is today. Sections 1114(1)(a) and 1125(a)(1) of the Act specify remedies for trademark infringement.  The former section pertains to situations when a person without the consent a trademark registrant uses in commerce a reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offer for sale, distribution, or advertising of any goods or services or in connection of such use is likely to cause confusion, cause a mistake or deceive with a registered is used in commerce.  The latter section pertains to situations where any person, who on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device or any false designation of origin, false, or misleading description of fact or false or misleading representation of fact is likely to cause confusion, cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person as to the origin, sponsorship, or approval of his or her goods.

Registered marks are enforceable under the laws of the country in which they are registered.  As for infringement activities, neither of the above referenced Lanham Act sections define what is meant by “in commerce.”  That is, does “in commerce” pertain to infringing activities of a U.S. registered mark only in the United States for a U.S. registered mark? Or does it “in commerce” include commerce within foreign jurisdictions?

The underlying case involved Hetronic’s radio remote controls, which are used to operate heavy-duty construction equipment, such as cranes.  An agreement between Hetronic and Abitron allowed Abitron to make and sell Hetronic-branded products that contained genuine Hetronic parts. In 2015, Hetronic sued Abitron and its affiliates in Oklahoma federal court, alleging they breached the contracts by making and selling products with unauthorized parts.   The district court awarded Hetronic a permanent injunction blocking Abitron from further infringement worldwide.  The jury’s $96 million dollar award was upheld by the Tenth Circuit Court of Appeals even though Abitron had argued that 99.98% of its infringing sales happened abroad.

In affirming the district court, the appeals court found that a significant amount of Abitron’s foreign sales of the infringing products ended up in the U.S. and Hetronic provided evidence that these sales caused confusion among U.S. customers and “even Abitron Germany’s own U.S. distributor.”  In finding for Hetronic, the appellate court also stated that the fact that only a small percentage of Abitron’s products made it into the U.S. was irrelevant.  “Otherwise, billion-dollar-revenue companies could escape Lanham Act liability by claiming millions of dollars of their infringing products from entering the U.S. represented only a fraction of their sales.”  The opinion also emphasized that the Lanham Act applied because Abitron “diverted tens of millions of foreign sales from Hetronic that otherwise would have ultimately flowed into the U.S.”

Abitron appealed to SCOTUS arguing that the Lanham Act is not applicable when infringement occurs outside of the U.S. for a U.S. registered mark and does not cause likelihood of confusion within the U.S.  Arbitron again emphasized its “small” percentage of U.S. sales.

SCOTUS construed the “in commerce” references in Sections 1114(1)(a) and 1125(a)(1) as providing no express statement of [the Act’s] extraterritorial application beyond U.S. borders or any other clear indication that [the Act] is one of the ‘rare’ provisions that do apply abroad. Having found that the Lanham Act provisions are not extraterritorial, SCOTUS next determined whether Hetronic’s claims involved domestic (i.e., in the U.S.) conduct.  According to the majority, Arbitron’s use in commerce (i.e., conduct) was not in the U.S.  As such, there could be no likelihood of confusion in the U.S and the Tenth Circuit’s decision was thus vacated.

Justice Sotomayer’s concurring opinion argued that the analysis should actually include a two-pronged approach.  She agreed that there is no indication that the Lanham Act’s “in commerce” provision has an extraterritorial reach.  However, a “domestic application of the statute can implicate foreign conduct in prong two of the analysis so long as the plaintiff proves a likelihood of confusion domestically.”   She concluded that the case should be vacated not because of the majority’s reasoning but because the Tenth Circuit and the district court did not apply the proper two-prong test.  As she emphasized, for a plaintiff to prevail on the second prong of such an analysis, the plaintiff must offer proof of likelihood of confusion by U.S. consumers as a result of the defendant’s extraterritorial infringing activities.  The majority’s statement that such a test would open the floodgates for confusion by the lower courts in applying the Lanham Act is thus misplaced.  Instead, the majority’s conduct-focused test on remand is improper because that test “is not supported by either the Lanham Act or this Court’s traditional two-step extraterritoriality framework.”

In reaching its conclusion, the Court did not rely on its decades-old previous decision on the Lanham Act’s extraterritorial reach in Steele v. Bulova Watch Co. Inc., 344 U.S, 280 (1952). That case involved both domestic conduct by a U.S. citizen and the likelihood of domestic confusion.  The Steele case involved a San Antonio, Texas resident who purchased unfinished Bulova watches and took them to Mexico for finishing.  When he learned that Bulova had not registered its mark in Mexico, he obtained a Mexican trademark which was later cancelled by the Mexican trademark agency.  His watches, sold in Texas and Mexico, were of inferior quality.

The Steele Court held that, “[w]here as here, there can be no interference with the sovereignty of another nation (because the defendant no longer had a Mexico-registered trademark), the District Court, in exercising its equity powers, may command persons properly before it to cease or perform acts outside its territorial jurisdiction.”

The Supreme Court in Abitron noted that the Steele and Abitron cases involve a different set of facts; in Steele, the plaintiff’s “in commerce” conduct within the U.S. was clear.  Even so, unfortunately, the Abitron decision now seemingly immunizes all trademark infringement that originates abroad regardless of whether that infringement (“the conduct”) also causes adverse effects (a damaging result”) in the U.S.   The various circuit courts of appeal had relied on Steele v. Bulova to develop different tests for applying the Lanham Act extraterritorially.  Will these courts now need to reevaluate their tests in light of the Arbitron decision?

Moreover, the Arbitron decision ar misses the Lanham Act’s point: that the focus should be on whether consumer confusion (the result) ultimately occurs in the U.S., not whether the defendant’s use (the conduct) was abroad or domestic.  SCOTUS in essence has established a bright-line test, overturning over 60 years of jurisprudence from the various circuits since Steele.  If the defendant’s use in commerce occurs abroad, then no claim can seemingly now be made under Abitron.  Yet with our global economy, the possibility of extraterritorial infringement has increased dramatically including promoting the importation of counterfeit goods into the U.S.  Abitron, as a foreign infringer, may not have intended that its problematic goods ever end up in the U.S., but some did as the district court case found.

The Act’s Section 1125(b) does cover importation of imported counterfeit goods (goods marked or labeled in contravention of the provisions of Section 1125(b) wherein such goods are not to be imported into the U.S. and may be seized by customs and border patrol.  The port of Miami alone seizes millions of dollars of counterfeit goods on an annual basis.  Obviously, the manufacture of such goods is an extraterritorial activity.  But here, the Act clearly is intended to prevent a U.S. effect from happening in the first place.   Unfortunately, foreign counterfeiting of major U.S. brands continues to be a significant problem particularly in the areas of electronics, pharmaceuticals, and fashion.  The Arbitron opinion may well make it more difficult for U.S. companies to enforce their trademarks and stem the flow of counterfeit goods into the U.S. (which happened with Arbitron’s counterfeit products as the jury found) when such items make it past customs and border control.


After Abitron, trademark registration strategies even by smaller companies should consider the possibility of registration in appropriate foreign jurisdictions.  For example, had Hetronic had an Austrian registered mark or an EU registered mark, it would have had an action for trademark infringement in Austria or any EU member country where the infringement occurred.   Please also see the take home points presented at the beginning of this blog.  Contact Susan at 305-279-4740 for a complimentary consultation on international trademark registration strategy.  We liaise with law firms abroad to protect our clients rights on an international basis.


© 2023 by Troy & Schwartz, LLC






Ten Tips for Avoiding Legal Problems When Selecting a Company or Product Name

Selecting a company name or a name for a new product is no easy task.  Both types of names have the potential to become the company’s valuable intellectual property assets, i.e., valuable brands.  A haphazard name selection process, however, may result in legal problems and/or prevent registration of the name as a trademark or service mark with the United States Patent & Trademark Office.  Clearly the last thing a new startup needs is a legal dispute involving the alleged infringement by its product name or company name of someone else’s registered trademark.   Also, the “wrong” name may well prevent its registration as a trademark or service mark.  Registered marks generally have substantially more value than unregistered marks.

Anybody who has been involved in a lawsuit understands that they are costly, stressful, and can take on a life of their own.  A registered trademark owner may of course give you the chance to comply with an initial cease and desist letter.  However, the company’s compliance will generally require it to stop using the mark and transfer any domain name rights, etc.  The upshot?  The company will have to start over in the branding process.

The following tips are intended to get your company off and running with a viable company and/or product name.

  1. Do a Google search on the name to see what other companies may already be using the same or a similar name.
  2. Do a search of your state’s corporate or limited liability company records in the states where the company will do business to see if anyone is using the same or similar name. Also check the state’s registered trademark records since some companies do obtain state-registered marks.  For Florida, this information can be found here.
  3. Do a search of the U.S. Patent & Trademark Office (USPTO) for federal trademark registrations of your proposed company/product name. Do not think that merely changing a letter in your proposed name or reversing the order words in a multi-word work will save you from a legal dispute with the owner of the registered mark or prevent trademark registration issues.  Clearly if you plan to file a trademark registration application for your company/product name with the USPTO, you should select a name that has a solid chance of meeting the USPTO’s trademark registration requirements.  This means that your mark must not be confusedly similar to a registered mark, generic, or merely descriptive of the goods or services provided under the mark.
  4. Do a search of domain name registrar websites such as to see if the domain name you want is available. Not only are domain names a necessity in today’s e-commerce world, but domain names also may have associated trademark rights.  Therefore, a minor change in the registered domain name, e.g., by registering the plural form (ABCS) of the registered domain name (ABC) could result in a trademark dispute.   The registration of a dot com domain name in particular could signal potential trademark issues.
  5. The best company/product name is one that is distinctive and memorable for both branding purposes and obtaining valuable registered trademark rights.
  6. Come up with at least three names you like and get the reactions of trusted individuals.
  7. If you plan to have a logo designed, ensure that there is a contract in place assigning all of the logo creator’s intellectual property rights to your company.
  8. If you are a non-US company planning to expand into the United States, note that US trademark law will apply to you.  In the United States, common law trademark rights are recognized.  Additionally, trademark registration requires usage of the mark in interstate commerce at the time of registration.
  9. Watch out for cultural implications involving your mark if you plan to register it in other countries.
  10. Consult with an intellectual property law attorney up front to avoid costly problems.  A good attorney will discuss potential problems with your proposed names.   A thorough mark knockout search should also be considered.


We are proud of the legal services we provide to our business and entrepreneurial clients on all matters related to intellectual property law including trademark law.  Contact us at 305-279-4740 to discuss your questions on trademark law matters.   Doing things right the first time in selecting a company/product name and building your brand could save you some real legal headaches and a lot of money down the road.  


Troy & Schwartz, LLC


Miami, Florida  (305) 279-4740

Where Legal Meets Entrepreneurship

This blog is for informational purposes only and does not constitute legal advice.

© 2023 by Troy & Schwartz, LLC

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