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I Double Dare You

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What happens when a trademark owner allows a registration for a mark to lapse? What if someone else wants to register the same mark? Is it abandoned?

Armstrong filed an application for registration of the mark “Double Dare” for several classes of goods and services including:
IC 041. Entertainment, namely, a continuing children’s show, and segments thereof, broadcast over television, cable televiion (sic) and the internet

Viacom filed an opposition to Armstrong’s application after the application was published, and Viacom sued Armstrong for a declaratory judgment that Viacom still had “common law” rights in the “Double Dare” mark, even though it allowed the federal registration to lapse.

According to Viacom, it has continued to use the mark. Continuous use of a mark in commerce establishes a common law right in a mark, even without a registration.

But the district court in New York dismissed the declaratory judgment action as being too speculative, at least until Armstrong’s application registers. To add complexity, the opposition proceeding is suspended, preventinng the mark from being registered, until after a final resolution of the declaratory judgment lawsuit.

So, until Viacom either fails to appeal the decision of the district court or the appellate process is completed, Armstrong’s application will be suspended.

Armstrong’s intent-to-use application is part of a pattern of trademark squatting, according to Viacom’s declaratory judgment action. So, it will be interesting to see what happens in this case, assuming the matter is not settled by the parties first, as so often happens in situations similar to this.

The takeaway is to be very careful and circumspect when considering whether to file an application for a mark with a registration that has lapsed but remains well known. You’ll want to have evidence that the mark has been completely abandoned by the original owner.


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About the author 

Chris Paradies

Florida Bar certified intellectual property and U.S. patent attorney, founder of ParadiesĀ® law, chair of the board of directors for the Tampa Bay Innovation Center and certified coStarters facilitator. West Point graduate, entrepreneur, disruptor. Father, husband, faithful steward.

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