ELZABURU Blog - Industrial and Intellectual Property

Tag Archives: Trademarks

US trademark legislation and the USPTO fight to prevent the proliferation of fraudulent trademark filings

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Since 2019, the United States Patent and Trademark Office (USPTO) requires the intervention of a local attorney in the handling of trademark cases and the provision of an e-mail address for the owner, as a requirement for the filing of trademarks at the Office. Moreover, the Office reserves the right to randomly ask for additional proof of use of registered trademarks.

The next step along these lines was on 27 December 2021, when the “Trademark Modernization Act (TMA)”, passed a year ago, came into effect. This will arguably be one of the most important milestones in US trademark practice in recent years.

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The TMA amends the Trademark Act in two main respects, introducing new procedures that simplify the cancellation of trademarks subject to insufficient use and changing certain aspects of existing procedures.

With regard to the newly created procedures, we shall focus on the two main proceedings, as they could have a considerable impact on the current situation at the Office, given that they are intended, in the words of US colleagues, to “clean up the register”: “Ex Parte Expungement and Re Examination Proceedings”.

The purpose of both proceedings is to contribute to the proper functioning of the Office, “make room” for the registration of trademarks of parties who legitimately use their trademarks and block access to the register for trademarks that are not used or are subject to insufficient use.

Both proceedings constitute a quicker, easier and cheaper alternative to the existing procedure (extremely onerous in the US) for cancellation of trademarks. In a jurisdiction with a long-established tradition and culture of defending trademarks, we could therefore see a new dynamic in trademark protection strategies.

  • By means of the Expungement proceeding, any party (even the Office itself) may request a ruling on the non-use of a mark in commerce. In this proceeding a ruling is sought on the complete absence of use in commerce with respect to a registered trademark, for all or part of the goods and/or services covered. A successful petition in Expungement proceedings would entail that the mark has never been used in connection with all or part of the goods or services. Such a petition may be filed with respect to a mark between 3 and 10 years following the date of registration. However, up to 27 December 2023, it is possible to do so for any mark that has been registered for 3 years or more. This exceptional grace period could be interpreted as a kind of incentive to cancel marks or to encourage registrants to adapt their registrations in keeping with their actual use.
  • Under the new Re Examination proceeding, a third party (also the Office itself) may request cancellation of some or all of the goods and/or services of a mark on the basis that the mark was not in use on the filing date of the application or before the deadline for filing the statement of use, where applicable.

It is important to remember that the US trademark system is based on the “First to use” principle and that, depending on the filing basis claimed in the trademark application, proof of use will be required before or after filing. Therefore, the relevant time period for this purpose will depend on the use claim made in each particular case.

There can be no doubt that trademark protection in the US will call for a greater effort from owners when formulating their plans for protection, a truthful and realistic view of the intended use of their marks, very precise specifications of goods and services, and solid and sufficient proof of use.

Thus, from 27 December 2021, trademark owners will not only have to face the test of sworn statements of use, but there will also be a risk of cancellation of marks at the request of third parties or the Office itself.

The TMA also introduces changes with respect to existing proceedings:

In proceedings for cancellation of trademarks before the Trademark Trial and Appeal Board (TTAB), cancellation may be requested on the new ground that a registered trademark has never been used in commerce. This ground for cancellation will be available at any time after the first three years from the date of registration.

While it will not be implemented until 1 December 2022, with regard to office actions issued by the Office, the shortening of response periods for office actions introduced by the TMA is particularly relevant. The period for responding to an office action will be three months rather than the more generous 6-month period currently available.

Finally, we would also highlight the introduction of a two-month term for third parties to file a “Letter of Protest” (observations or request for evidence) in relation to a ground for refusing registration of a mark, in examination proceedings.

These are undoubtedly important changes aimed at helping to clear invalid trademark registrations from the register and ensure the smooth functioning of the US market and which, in some cases, will affect the strategies designed by owners for the defence and protection of trademarks and also for their maintenance, in a key jurisdiction for the portfolios of trademark owners all over the world.

Author: Cristina Arroyo

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Actress and singer Miley Cyrus is entitled to use name as a trademark

Miley Cyrus

On 16 June 2021 the General Court issued its decision in Smiley Miley Inc v European Union Intellectual Property Office (EUIPO) (Case T‑368/20).


In 2014 Smiley Miley Inc – a company of world-famous artist Miley Cyrus – filed an application with the EUIPO for the registration of MILEY CYRUS as an EU trademark for goods and services in Classes 9, 16, 28 and 41.

Cyrus Trademarks Ltd opposed the application on the ground that it was confusing similar with the earlier EU trademark depicted below for goods in Classes 9 and 20:


In 2018 the EUIPO accepted the opposition in part on the ground that there was a likelihood of confusion between the mark applied for and the earlier mark in respect of most of the goods and services covered by the mark MILEY CYRUS.

That same year, the EUIPO dismissed an appeal filed by Smiley Miley, finding that the signs at issue were visually and phonetically similar to an average degree and that the conceptual comparison was neutral. Smiley Miley lodged an appeal with the General Court.


Having conducted an in-depth analysis of the case, the General Court annulled the EUIPO’s decision, thus granting the EU trademark MILEY CYRUS.

The General Court focused its decision on two main issues.

First, the court addressed the alleged error made by EUIPO when finding that the element ‘Miley’ (first name) in the mark applied for would be perceived as a less dominant element in comparison with the element ‘Cyrus’ (surname).

The court held that, although there is case law indicating that surnames have, as a general rule, a more distinctive character than first names, it is necessary, however,

to take account of factors specific to the case and, in particular, of the fact that the surname concerned is unusual […], which is likely to have an effect on that distinctive character […] and to take account of whether the person who requests that his or her first name and surname, taken together, be registered as a trademark is well known […].

Bearing in mind that (i) neither ‘Miley’ nor ‘Cyrus’ is a common first name or surname; (ii) the mark applied for refers to the first name and surname of a world-famous artist; and (iii) the artist is known by that first name and that surname taken together, the court stated that those two elements were equally distinctive.

Second, the court held that the EUIPO committed an error when comparing the signs conceptually and considering that the name of the reputed artist Miley Cyrus had no conceptual meaning.

The court underlined that:

a conceptual comparison remains possible where the first name or the surname in question has become the symbol of a concept, due to, for example, the celebrity of the person carrying that first name or surname […].

The well-known character of the American singer and actress meant that it was highly unlikely that consumers would not associate the mark MILEY CYRUS with the name of the artist.

Consequently, the court concluded that, although the marks were similar, the conceptual differences between them were such as to counteract the visual and phonetic similarities.


The judgment confirms, on the one hand, that names and surnames may have a conceptual meaning and, on the other, the possibility of ‘neutralising’ any visual and phonetic similarities where it is established that the relevant public assigns to one of the signs a clear and specific meaning that can be grasped immediately.

Considering that the courts have followed this same line over the past few years, the decision does not represent a turning point in case law. Nevertheless, it reinforces the protection enjoyed by celebrities through the registration of trademarks, bearing in mind their reputation and worldwide recognition as a result of appearances in the media.

This article first appeared on WTR Daily, part of World Trademark Review, in june, 2021. For further information, please go to www.worldtrademarkreview.com.

Author: Soledad Bernal

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The conflict between company names and trademarks (or tradenames)

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Conflicts between company names and trademarks (or tradenames) are very common and there has always been considerable debate, both in doctrine and in case law, regarding the relationship and differences between the respective concepts and, specifically, regarding the scope of the exclusive rights conferred by a trademark (or tradename) registration with respect to company names that are identical or similar to such signs.

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First of all, it is necessary to identify the differences between the two concepts:

  • A company name is the designation that serves to identify companies in legal affairs (it will normally appear in the company’s documentation concerning its legal relations, such as invoices, contracts, etc.). Company names are registered at the Company Registration Office and their governing rules are set out in the Company Registration Office Regulations.
  • A trademark is the name or sign that serves to identify the goods and services of an undertaking in the marketplace and distinguish them from those of other undertakings, and a tradename is the name or sign that serves to identify an undertaking in the course of trade and distinguish it from others that carry out the same or similar activities in the marketplace. Both are registered at the Spanish Patent and Trademark Office and their registration confers on the owner an exclusive right to use them in trade.

What happens when a company name is identical or similar to a registered trademark or tradename? Does the company name constitute an infringement of the trademark or tradename?

The rules governing such a conflict are set out in the following sections of the Spanish Trademark Act [in Spanish]:

  • 14th Additional provision
  • Article 34

The 14th Additional provision of the Trademark Act establishes a bar to registration aimed at the Company Registration Office: the company registries shall refuse the company name applied for where it is the same as or might give rise to confusion with a reputed trademark or tradename.

In accordance with this provision, it is therefore clear that a new application for a company name cannot conflict with a reputed trademark or tradename. But what happens if the trademark or tradename is not reputed, or if the company name is already registered at the Company Registration Office? Can owners of trademarks or tradenames invoke their exclusive rights to seek the cancellation of the company name or prevent its use?

In these circumstances, it is necessary to rely on Article 34 of the Trademark Act, which is the provision that regulates the rights conferred by a trademark or tradename registration. Under this article, for the owner of the trademark or tradename to be able to prevent a third party from using a sign, various cumulative requirements must be fulfilled, of which, for the purposes of the subject matter at issue, I would highlight the following:

  • the use must be in the course of trade; and
  • it must be in relation to goods or services.

It follows from the above that:

  • The mere registration of a company name at the Company Registration Office does not in itself constitute an infringement of an earlier trademark or tradename registration that the owner of a trademark or tradename registration is entitled to prevent. It is necessary that the company name is used in the course of trade, that is, in the marketplace.
  • Mere use as a company name, that is, for the purpose that it is intended to serve, namely, to identify the company in legal matters, cannot constitute an infringement of an earlier trademark or tradename registration that the owner is entitled to prevent. The use of the company name must be in relation to goods and services.

Thus, it is ultimately an improper use of the company name, given that, as noted above, that is not its intended purpose, which is to identify the company in legal matters.

In summary, the owner of a registered trademark or tradename is entitled to prohibit use of a company name provided that (in addition to other requirements for infringement, such as confusion, etc.) said company name is used: (i) in the course of trade, and (ii) in relation to goods or services. The entitlement to prohibit infringing use of a company name is also expressly provided for in Art. 34.3 (d) of the Trademark Act.

The above parameters and requirements have been confirmed in case law. Particularly well known in this area is the CJEU’s judgment in the case C-17/06 Céline of 11 September 2007, the principles of which remain valid and are applied by the Spanish courts.

Previously published in Economist & Jurist [in Spanish]

Author: María Cadarso

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Some thoughts on mandatory use of a registered trademark

I would like to share my thoughts here on the issue of mandatory use of a registered trademark, in the light of the content of some recent decisions handed down by the constituent courts of the Court of Justice of the European Union.

red car fenderIn the Court of Justice’s judgment of 22 October 2020 (C-720/18) concerning the use of Ferrari’s Testarossa (figurative) trademark, I was struck by the citing of a Convention (of whose existence I was frankly unaware) signed back in 1892 between Switzerland and Germany. In this Convention, which is still in force according to the judgment, it is established that the legal disadvantages which, under the laws of the contracting parties, occur when a trademark has not been used within a certain period of time are precluded if use has taken place in the territory of the other party (Art. 5.1).


Based on this circumstance, use of a German trademark in Switzerland shall be valid for the purpose of attesting to use of a German national trademark which, therefore, cannot be revoked, even if it has not been used within the territory of Germany. The paradox that arises is that, as pointed out in the judgment, in the event that the same German trademark were used as a basis for opposing a new European Union trademark application, the opposition would fail if the applicant were to ask for proof of use of the German trademark, given that the use has not been made in the territory of the European Union.

Infinite Eight Champagne Extra Brut 2004Another judgment on which I would like to comment is the one handed down by the General Court on 23 September 2020 (T-601/19) ruling on the case relating to opposition proceedings involving the European Union trademark application “in·fi·ni·tu·de” and the earlier Spanish trademark “infinite”, both covering wines. In said proceedings, the opponent was required to attest to use of its trademark. To this end, various documents were submitted showing that the trademark “infinite” had been used in relation to exports of wines to Canada, Puerto Rico and the United States.

Having accepted the use of the trademark “infinite”, the Court assessed whether there was a likelihood of confusion between the trademarks in dispute. In this regard, the Court took as its starting point that the relevant territory was Spain and the relevant public was the general public, whose level of attention was average. The truth is that there are nuances to both aspects, given that, since the trademark is Spanish, it would indeed seem to be correct that the relevant territory is Spain. However, if we consider the matter in detail, it must be acknowledged that the goods are sold and consumed outside the EU. Therefore, based on the reality in the marketplace, the likelihood of confusion, at least from the perspective of the general public, would arise in those countries, as said “general public” would be Canadian or US consumers.

Logically, that relevant public is not valid for the purpose of analysing a conflict between trademarks arising in the European Union. In such cases where use is demonstrated on the basis of exports of the goods to third countries, it would seem more logical to think that the relevant public should consist of the professionals who carry out the import or export of the goods, in which case the pertinent analysis should be carried out by assessing the level of attention of those professionals.

FRIGIDAIREThe last of the judgments on which I wish to comment is the judgment issued by the General Court on 28 October 2020 (T-583/19). This case concerns the trademark FRIGIDAIRE, which was partially revoked by the EUIPO, since sufficient use was not demonstrated for certain goods (washing machines, dishwashers, etc.).

The owner had filed proof of use of the trademark in respect of those electrical appliances, submitting, among other evidence, material referring to sales of such goods for use on US military bases in Belgium and Germany. The General Court held that in such cases there is no use in the territory of the European Union given that the areas occupied by such military bases do not form part of that territory and, therefore, since there is no use of the trademark FRIGIDAIRE in the European Union, it should be revoked in respect of those goods.

As may be seen, the cases concerned in the cited judgments are somewhat unusual and they are a further indication that, when applying trademark law, any assessment made must be based on the individual circumstances of the specific case.

Author: Jesús Gómez Montero. Former Partner of ELZABURU and Member of the Advisory Board of the Alberto Elzaburu Foundation

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“Good morning, Myanmar”

Myanmar "Soft Opening Period"

After a sleepy few months for Myanmar’s new Trademark Law, no doubt as a result of the COVID-19 crisis, it seems that it is finally waking up. The Law provides for a procedure called the “Soft Opening Period” so that holders of rights acquired in their signs in Myanmar can register their trademarks on a preferential basis. Our firm has been publishing information on the development of this Law and on this procedure. The earlier articles in our blog can be accessed by clicking on the following links:

Myanmar "Soft Opening Period"  

Since the Law entered into force on 31 January 2019, various attempts have been made to put the Intellectual Property Office into operation. All efforts to date have been frustrated for one reason or another. The challenge of setting up an Intellectual Property Office from scratch in a country such as Myanmar, and the unfortunate situation that has developed worldwide over the course of this year following the spread of COVID-19, has caused considerable delays and brought this ambitious project to a standstill.

Following the successive failed announcements regarding the inauguration of the “Soft Opening Period”, first in January and then in April, the Myanmar authorities have announced a new date for commencing activities. If no circumstances hamper the government’s plans, this preferential procedure for registering acquired rights will open on 1 October 2020.

As we have mentioned in earlier articles, the new Trademark Law introduces the “first to file” principle for registration. So as to avoid potential detriment to rights acquired by owners of trademarks that have already been used in the Myanmar marketplace and/or complied with the formalities in existence up to now for the defence of trademarks in Myanmar, those parties will have 6 months, from 1 October and up to 31 March 2021, to apply for their trademark rights at the Intellectual Property Office. Once the “Soft Opening Period” ends, registration will be open to any interested party.

The preferential procedure is aimed at:

  • Holders of “Declarations of Ownership” recorded at the Office of Registration of Deeds.
  • Owners who have used their trademarks and have sufficient proof to demonstrate said use (for example, the publication of Cautionary Notices in newspapers).

ELZABURU has been following developments concerning the new Trademark Law from the very beginning and has a network of local agents who keep us informed and constantly up to date on the situation. We are therefore ready to accompany our clients in the process of protecting their distinctive signs in Myanmar, now as registered trademark rights.


Author: Cristina Arroyo

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