Taft Trademark Attorneys Prevail in First Trademark Reexamination Petition
Taft Trademark attorneys Kristine Boylan, Amanda Wilcox, and Kristin Hardy achieved a win for our client, Atventure Retail Group (Atventure), in one of the first decisions under the new Trademark Reexamination Petition process ushered in by the Trademark Modernization Act (TMA) and the first filed by Taft as a firm.
Atventure applied for a trademark for a new line of baby shoes under the brand name HIPFOX and was refused by the United States Patent and Trademark Office, despite the mark being clear and available for use. Our investigation uncovered that the Applicant who owned the fraudulently filed mark had more than 700 other pending trademark applications in the United States, and owned at least 531 questionable registrations. In all, the Applicant provided fraudulent specimens that were digitally altered, and/or mockups designed to circumvent the requirement of legitimate use in U.S. commerce. On behalf of Atventure Group, Taft prepared a Petition to have the fraudulently-filed HIPFOX Registration re-examined, one of the first under the new TMA.
On Nov. 1, 2022, Atventure Group’s Petition was granted and the blocking HIPFOX Registration was canceled. As a result, there is now a registration path for Atventure’s HIPFOX branded shoes.
The Trademark Modernization Act of 2020 was effective in December 2021 and included the most significant changes to federal trademark law in almost 30 years. The expungement and reexamination proceedings may be filed by either the Director at the USPTO, or a third party petitioner (petitioner), alleging a prima facie showing of nonuse of a registered trademark. Read more about the TMA here.
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