Unlawful Use of a Trademark in Commerce and the Affirmative Defense to Infringement

The Lanham Act imposes on a trademark’s owner the requirement that the mark be used lawfully in commerce. If it is not, the USPTO should refuse to register it, and if registered the registration should be canceled. As well, unlawful use of a trademark in commerce has been applied as an affirmative defense to infringement in the case of registered marks, and there is no basis to distinguish, for this purpose, registered and unregistered marks. It’s just that the tested cases have been with registered marks.

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Licensee Estoppel and Naked Licensing

Federal courts are prone to apply licensee estoppel to prevent a trademark licensee from challenging its prior licensor’s rights in the mark. If, of course, a licensee can establish that the prior licensor has no rights in the mark-at-issue, that licensor will not be able to enforce its rights in the mark. Those circumstances will often arise when the prior licensor sues it prior licensee because the latter continues to use the mark following expiration of the license.

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Commoners in the Land of Trademarks

One of the British tabloids has taken Meghan Markle to task because she wants to trademark “archetypes” for use in conjunction with her Spotify podcast. The tabloid defiantly asserts archetypes is 470 years old. So? They write she should not be entitled to own this word. She is, however, entitled to grab a word from the dictionary and use it as a trademark to the exclusion, in category, of anyone else’s use.

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Rejection of a Trademark License in Bankruptcy does not Terminate the Licensee’s Right to Use the Trademark

On May 20, 2019, the Supreme Court answered the longstanding question of what happens to a licensee’s right to use a trademark under a license agreement if a bankrupt licensor rejects the license agreement. The Court held that a licensor’s ability to reject a license agreement does not extinguish licensee’s rights under the trademark license and therefore, the licensee may continue to use the trademark under the terms of the license agreement. Continue reading

Update: Is Pandora PayPal?

In August of last year, I wrote a blog post analyzing the likelihood of confusion factors as applied to the trademark infringement claim that PayPal filed against Pandora based on Pandora’s blue “P” logo.


In November the parties reached a settlement agreement and PayPal dismissed the lawsuit against Pandora. No details of the settlement were announced.

Recently I noticed what I thought was a new app on my iPhone; but it wasn’t a new app — it was Pandora’s app with a new logo design. If you have the Pandora music app on your smart phone, you also may have noticed that Pandora’s logo is quite different than it was before (I like it).


I can only speculate as to what the settlement agreement between Pandora and PayPal says, as it is likely confidential, but it is common in settlement agreements concerning trademark disputes that the alleged infringer is given a certain amount of time to phase out an infringing mark and rebrand. Perhaps that is what happened here.

UMBC’s 16 Over 1 Win – A Lesson in the Importance of Trademark Registration

By now just about everyone is aware that the UMBC Retrievers became the first Number 16 seed to beat a Number 1 seed in the NCAA men’s basketball tournament. Prior to this past Friday night, many may not have been aware of the existence of UMBC, and now everyone is talking about this historical win.

With the massive amounts of attention that the school is getting, the school’s officials were made aware that UMBC did not have a trademark registration for “Retrievers.” Continue reading

LVL XIII v. Louis Vuitton

Sellers of goods often will add a design element to their product and claim no competitor can copy its design, asserting it will violate trademark rights because the design element has become associated with the seller in the minds of consumers. In other words, the design element functions as a trademark. Take, for example, the solid red sole of the Christian Louboutin shoe.

Recently, LVL XIII, a seller of popular sneakers featuring a rectangular metal plate design on the toe, sued Louis Vuitton for using a similar metal toe plate design on its shoes. Continue reading