Wednesday, November 12, 2008

Trademarks Want To Be Used !

Trademarks want to be used. In fact, in the U.S., trademarks darn well expect to be used. Indeed, such use is life affirming for a trademark. In the very recently published and released 9th Circuit Federal Court ruling in Halicki Films, LLC v. Sanderson Sales and Marketing, the court reversed the lower court's (District Court) ruling granting a summary judgment motion for the defendant. In Halicki, copyright and trademark rights were being contested. The 9th Circuit, in part, reversed the lower court when it cited prior relevant law on the use of a trademark as opposed to the registration of a trademark. In citing an earlier 9th Circuit case on point, the Court stated as follows: "It is axiomatic in trademark law that the standard test of ownership is priority of use... [I]t is not enough to have invented the mark or even to have registered it first; the party claiming ownership must have been the first to actually use the mark in the sale of goods or services. Sengoku Works Ltd. v. RMC Int'l Ltd., 96 F.3d 1217, 1219 (9th Cir. 1996). Accordingly, ownership of an unregistered trademark, like ownership of a registered mark, is sufficient to establish standing under the Lanham Act." See 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §32:3 (4th ed. 2008).

Halicki Films, LLC v. Sanderson Sales and Marketing - filed November 12, 2008;
Cite as 06-55806; Full text

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