Protecting your trademarks through the United States Patent and Trademark Office is, of course, important, but application alone is not enough. It is more important to see a trademark all the way through to the end of the registration process, especially when it is filed under a 1B “intent to use” application. 1B applications allow those that have yet to use their goods and services in interstate commerce to file for trademark protection. A Statement of Use must be filed within six months after the application's Notice of Allowance is issued to show that the goods or services have been, in fact, used in commerce. This process allows a trademark applicant to protect its mark before using it in commerce, which can be an effective strategy for protecting a mark from theft by another party. But failing to file a timely Statement of Use, or an extension of time to file, can result in the loss of your trademark rights.
In Natural Answers, Inc. v. SmithKline Beecham, Corp., Natural Answers sued SmithKline (GSK) for trademark infringement of its HerbaQuit mark. Natural Answers, a herbal supplement company, created and sold HerbaQuit from 2000 to 2002 as an aid to deal with the psychological addiction of smoking. Natural Answers sold only 50,000 boxes and soon learned that they could not adequately advertise HerbaQuit, so they approached both GSK and Philip Morris with the hopes of forming a joint venture. Nothing ever materialized, and Natural Answers abandoned the sale of the lozenges in March 2002.
In November of 2002, GSK launched its own stop smoking lozenge: Commit. On October 20, 2004, Natural Answers brought suit against GSK for trademark infringement, unfair competition, and numerous other claims. Ultimately the court found that Natural Answers did not hold a valid trademark and thus could not assert claims under the Lanham Act. Natural Answers had filed for a registered trademark with the USPTO under a 1B application and a Notice of Allowance was issued on February 29, 2000. Natural Answers filed a Statement of Use on August 29, 2000, the last possible moment, but its Statement of Use was defective and Natural Answers had failed to ask for an extension of time. The court found that Natural Answers had abandoned the use of its mark without the intent to resume because it hadn't used it in over three years and failed to filed an adequate Statement of Use, so necessarily its Lanham Act claims had to fail.
This case is another example of how simply registering a trademark isn't enough. The trademark registration process can often be extremely involved. It is important to have an attorney monitor the entire process and respond to any Office Actions from the USPTO, lest you lose your rights in a valuable mark.
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