Australian Company Has Standing to Challenge ‘Naked’ Trademark, Says Fed. Cir.
Written July 29, 2020
The US Court of Appeals for the Federal Circuit on July 27, 2020, held that Australian Therapeutic Supply Pty. Ltd. (ATS), an Australian condom maker, can challenge a trademark registration for the mark “Naked” despite the fact that ATS contracted away its proprietary rights in its unregistered marks. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM LLC, Fed. Cir., No. 2019-1567, Opinion 7/27/20.
ATS adopted the “Naked” mark in 2000 in Australia and began marketing their condoms to the US on the internet by 2003, however that same year another company secured a US trademark for “Naked” condoms.
ATS sued for cancellation, but the Trademark Trial and Appeal Board (TTAB) concluded that ATS had informally granted Naked TM LLC rights to “Naked” in the US through email negotiations and had no US rights nor interest in cancellation.
The Federal Circuit disagreed, finding that ATS’s advertising and sales in the US demonstrated real interest and belief of damage.