For brand owners, franchisors, retailers, and in-house trademark counsel, a federal registration is only as secure as the use behind it.
A mark kept alive through minimal use can become a liability when the owner tries to enforce it.
Gregory J. Krabacher, Member of the Firm of Epstein Becker Green, counsels health care organizations and other clients on trademark portfolio management and enforcement. In a recent article published by ILN IP Insider, he examines token use through Buc-ee’s, Ltd. v. Hanes Road Carryout, Inc., a Southern District of Ohio case.
The case centers on the store chain’s registration for the word BEAVER’S, which has reached incontestable status. Greg questions whether the chain uses that mark in the ordinary course of trade or only to reserve rights. If the use is token, abandonment and non-use remain grounds for cancelling the registration under Sixth Circuit law. On that point, “incontestability does not equate to invincibility,” Krabacher wrote.
Greg also considers what happens if the registration falls. Nationwide priority would give way to common-law rights, which turn on actual use and market penetration in the relevant territory. He reviews the doctrines that govern those disputes, including the Tea Rose-Rectanus rule and the Dawn Donut rule, which the Sixth Circuit has effectively rejected. For companies, the practical lesson is that building rights in a secondary mark through light use risks a finding that the mark is invalid or unenforceable.
Get in Touch
To discuss how your trademark portfolio, including secondary marks, would hold up to a challenge based on use in commerce, contact Gregory J. Krabacher at GKrabacher@ebglaw.com.
