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Continuous Use in Trademarks Infringement Claims

If you speak multiple languages you're probably familiar with the expression 'if you don't use it, you'll lose it.' My lack of Spanish speaking skills despite early immersion is a testament to that expression's truth. For owners of trademarks, the adage also holds true. A trademark that not is not in continuous use by its owner can be considered abandoned, and no longer given protection by the law.

If you suspect your trademarks are being infringed on you should contact an intellectual property law attorney to help make sure your marks are properly protected.

Generally, any trademark infringement claimant must show continuous use of the mark in commerce in order to bring a claim. As with most otherwise uncomplicated terms, 'continuous use' can be a confusing concept in the context of the law. Usually, where it can be proven consumers are made to associate a particular mark with a particular product in a particular market, continuous use will be established.

But any type of use will not always suffice. Just this February, one infringement claimant called upon the Ninth Circuit Court of Appeals to define continuous use in the context of ongoing litigation.

In Airs Aromatics, LLC, v. Victoria's Secret Stores Brand Management, Inc., 744 F.3d 595 (9th Cir. 2014), Airs Aromatics ("AA") sought to cancel Victoria Secret's "Dream Angels" trademark. Victoria Secret had previously been licensing the mark from AA until AA's corporation status was revoked temporarily. At that time, Victoria Secret filed its own "Dream Angels" registration, which was approved. Shortly after, AA revived its business and sought to reestablish priority over the mark.

AA argued though it had not directly used the "Dream Angels" mark in commerce, its effort to protect the mark through ongoing litigation should constitute continuous use. The Ninth Circuit Court disagreed. It clarified 'continuous use' requires continuous, public usage of a trademark for the purpose of identifying marked goods to the public. Though litigation could serve as an argument against abandonment of the mark, it was not sufficient to establish a continued effort by AA to market particular goods to the public.

Even where properly registered, trademark protection isn't easy. This very specific application of the continuous use doctrine serves as a reminder that it can be difficult to establish. You should contact an intellectual property law attorney who can help evaluate all of the relevant facts surrounding your mark to determine the best way to achieve protection.

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