SW Legal studies in Business

Registration of Mark Cancelled in Favor of Party Who Used Mark in Commerce
Description Appeals court held that a firm that registered a trademark, but did not use it until after another party used the mark in commerce, loses the mark in favor of the party who used it in commerce.
Topic Intellectual Property
Key Words Trademark; Registration; Commercial Use; Infringement
C A S E   S U M M A R Y
Facts The great baseball player George Brett joined Tridiamond Sports, a maker of baseball equipment. Tridiamond made a wood bat that was much more durable than most wood bats. Brett Brothers Sports International began selling Tridiamond bats in 1999 under various names, including a “Stealth” model. Central Manufacturing had used the Stealth mark for products since 1982. It used the mark for boats, motorcycles, bicycles, auto locks, comic books, lawn sprinklers, and other products. In 1984, Central registered the mark for “sporting goods, specifically, tennis rackets, golf clubs, tennis balls, basketballs, baseballs” and other products, but did not produce those products. In 2001 it licensed the Stealth mark to Blackwrap to use on its baseball bats. In 2004 the Patent and Trademark office registered the Stealth trademark to Central for baseball bats. About that time, Central first became aware that Brett used Stealth on baseball bats and sued Brett for infringement. The trial court held that Brett was the first to use Stealth on a baseball bat, in 1999, so that precluded a claim of infringement since Central did not use the mark until later on baseball bats. Central appealed.

Affirmed. Central failed to show that it actually used the Stealth mark in connection with baseball bats before 1999, when Brett began use. The Lanham Act protects marks when used in commerce; it does not allow the makers of products to register and store names in case they may use them in the future. The trial court was correct in canceling Central’s registration of the Stealth mark for baseball bats, so Brett may use the mark. The award of attorney fees and defense costs to Brett is also upheld.

Citation Central Manufacturing, Inc. v. Brett, 492 F.3d 876 (7th Cir., 2007)

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