8.2. SR 09-18-2017 - Laserfiche WebLink

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APPENDIX TRADEMARK , 1 , domain and can be appropriated by another party. Federal judges have held once abandoned, the new user of the trademark becomes the senior user of the trademark and would likely prevail in a dispute against the previous owner under the "priority of use" test of ownership. Sengoku Works a RMC Intl, 96 F.3d 1217, 1219 (9th Cir. 1996). Additionally, "an intent to resume use of the mark formulated after more than three years of non-use cannot be invoked to dislodge the rights of another party who has commenced use of a mark—thereby acquiring priority rights in that mark—after three years of non-use." (Imperial Tobacco Ltd., Assignee of Imperial Grp. PLC a Philip Morris, Inc., 899 F.2d 1575, 1581 (Fed. Cir. 1990) and See Indianapolis Colts, Inc. v. Metro. Baltimore Football Club Ltd. P'ship, 34 F.3d 410, 412 (7th Cir. 1994)) (NJP Legal, 2017). Federal trademarks are also considered abandoned if the proper forms and affidavits are not submitted to the US Patent and Trademark Office at the required times (US Patent and Trademark Office, 2013). According to 15 U.S.C.§ 1058,these required times are as follows: 1. "Within the 1-year period immediately preceding the expiration of the first 6 years the date of registration under this Act or the date of the publication under section 12(c). 2. "Within the 1-year period immediately preceding the expiration of 10 years following the date of registration,and each successive 10-year period following the date of registration. 3. The owner may file the affidavit required under this section within the 6-month grace period immediately following the expiration of the periods established in paragraphs (1) and (2),together with the fee described in subsection (b) and the additional grace period surcharge prescribed by the Director" (US Patent and Trademark Office, 2013). 0 Page 51 ,�UNIVERSITYof ST.THOMAS EN-ERGYCITY Opus College of Business