Macy's v. Strategic Marks, LLC: briefing on partial summary judgment motion, decision denying motion, and case docket
This case, Macy's v. Strategic Marks, LLC, is worth following in order to gain an understanding of potential pitfalls in "intent-to-use" trademark applications, as well as certain issues surrounding "heritage" brands. The U.S. District Court for the Northern District of California denied Macy's' motion for partial summary judgment in the case this week, writing:
"... Keeping in mind the Ninth Circuit's instruction that the 'intensely factual nature of trademark disputes' means that summary judgment 'is generally disfavored in the trademark arena,' [argh!] and drawing all inferences in the non-movant Defendant's favor, the Court finds that there are genuine, disputed issues of material fact as to the definitions of Defendant's services.... Specifically, the parties' dispute over the definitions of 'retail' and 'on-line'in Defendant's [Statements of Use submitted to the Trademark Office] could reasonably be resolved in favor of either party. The Court also finds that there are genuine, disputed issues concerning whether, under the Ninth Circuit's 'totality of circumstances' standard, Defendant's sales- and non-sales-related activities meet the 'use in commerce' requirement for service mark registration...."
Note that excessively "strategic" intent-to-use applications are often viewed with disfavor. So if you're in the process of deciding on a name for your company, which will make extensive use of ITU applications, you might want to steer clear of the word "strategic." Don't call the company "Mark Warehouse, LLC," either. Just a thought.
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