On My Mind Blog

You may have obtained a U.S. registration of a mark you claim to have used in commerce.  Nevertheless, a third party may petition the U.S. Patent and Trademark Office to cancel your use-based registration requiring you to present direct proof that goods or services under the mark actually were provided in commerce (regulated by Congress, or in one state but affecting interstate commerce, or in more than one state, or between the U.S. and another country) at the time you applied to register your mark.

The U.S. Trademark Act prohibits the registration of marks that are likely to be confused with other marks that have either been registered with the U.S. Patent and Trademark Office (USPTO) or are in use by another entity in the United States. 15 U.S.C. §1052(d).

Generally, the word element is considered dominant in a composite mark consisting of words and design elements.  However, such a mark can be found to differ sufficiently from a competitor’s mark if, for example, the word and design elements present a distinguishing cohesive narrative.