Mark Paskar, Steve Trubac and Jazmyn Ferguson analyze Trademark Trial and Appeal Board Decision in Law360

Partner Mark Paskar, Counsel Steve Trubac and Associate Jazmyn Ferguson recently authored an article in Law360 analyzing a recent Trademark Trial and Appeal Board opinion in the case Nike Inc. v. Blue Ribbon Team LLC.

The article discusses what U.S. trademark applicants who file applications based on a “bona fide” intent to use need to show if a trademark application is challenged and provides tips on how to avoid the result in this case, in which the applicant could not support its “bona fide” intent at filing and lost its application as a result.

"This is ultimately a case about sequencing. The intent-to-use system protects applicants with a firm and demonstrable intent at filing to use a mark in commerce. It requires prefiling preparation that cannot be retroactively cured after a challenge exposes a gap," the authors write. "In short, this case serves as a reminder that clients should be strongly advised not to put the cart before the horse in filing a trademark application under Section 1(b)."