The Court of Justice of the European Union ("CJEU") confirmed in a recent decision that a party initiating a trademark revocation action on the grounds of non-use is not required to provide evidence of market research concerning possible use of the trademark in question.
CJEU Decision - In Maxxus Group GmbH v Globus Holding GmbH C‑183/21, the CJEU was asked whether German procedural rules were consistent with Article 19 of the Directive.
Another fraud claim bit the dust in this opposition to
registration of the mark
ZOOMPAY for electronic
payment services. Opposer PayPal claimed a likelihood of confusion
with the registered mark
XOOM (in standard
character form) for overlapping money transfer services. Applicant
ZT Holdings charged PayPal with fraud in procuring five of the
pleaded registrations, but ZT failed to prove that any false
statements by PayPal were made with an intent to deceive the USPTO.
End of fraud story.
PayPal, Inc. v. ZT Holdings, LLC2,
Opposition Nos. 91208416 and 912173743 (March 29, 2021) [not
precedential] (Opinion by Judge Peter W. Cataldo).
Fraud: The Board discussed at length Applicant
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Suppose that you want to register a trademark that identifies a source of goods or services for your business. What if you file a federal trademark application and the U.S. Patent and Trademark Office refuses registration of the trademark based on a likelihood of confusion with another trademark registration? Can you cancel the cited trademark registration with the U.S. Patent and Trademark Office because of non-use in commerce? The answer is “YES!” if the trademark has been abandoned for non-use or never been used in commerce or before a particular relevant date.