Trademark Trolls: Do Use Requirements Repel Them?

By Sukey Omran

Photo by Nadine Shaabana on Unsplash

Since COVID-19 has become a harsh reality the USPTO has reported over 600 trademark applications that use or refer to COVID. Many of these applications are said to have been applied for by “trademark trolls”, a term used to describe applicants who want to register a trademark without intent to use the mark, or in bad faith. However, since the USPTO requires actual use of the mark in order to proceed to registration, most of these “trademark troll” applications will likely fail since trolls are unlikely to demonstrate use of the mark in commerce.
 
The emergence of trademark trolls in the United States touches upon an interesting question regarding how jurisdictions such as Canada, who have eliminated the use requirement for the purposes of obtaining a trademark registration, will repel trademark trolls. The amended Canadian Trademarks Act has been in force for almost two years now, and it introduced new provisions which provide for 'bad faith' as a new ground of opposition and invalidation. Of course, Canadian registrations may also be cancelled for non-use after the third anniversary from the date of registration.  Time will tell if these provisions will be sufficient to curb the activities of trademark trolls in Canada. 
 
If you have questions about what constitutes 'bad faith' or how to block a trademark troll, please contact us at Clancy PC.

Source: ​https://www.law.com/nationallawjournal/2020/11/01/covid-19-and-coronavirus-trademarks-opportunistic-registrants/