Trademark dispute between drone maker and drone photographer. HOVERFLY v. HOVERFLY

A trademark is traditionally thought of as a word, phrase or symbol, but anything that a product seller uses to distinguish its products from competitor’s products can be granted trademark protection. A trademark can be registered with the United States Patent and Trademark Office to strengthen the rights associated with a trademark, however registration is not required to begin using a trademark to brand products. Obtaining a right to a trademark law in the United States is based on using the trademark in commerce. The first person to use a trademark to brand products is considered the senior user and has priority over junior users of a trademark.

A senior user’s claim to a trademark has priority over a junior user. Even if a junior user registers their trademark, the senior user’s right to use the trademark within the geographic region that senior user operates will not be extinguished.

When a trademark user files an application with the United States Patent and Trademark Office to register the trademark, an examining attorney will be assigned to the application. The examining attorney will review the trademark application to ensure that the trademark meets all the statutory requirements for registration and perform a search to confirm that the trademark in the application is not confusingly similar to trademarks which are already registered. This can become tricky because the USPTO limits it search to registered trademarks, it does not do an exhaustive search of an entire marketplace to see if anyone else is using a trademark. Nor does the USPTO consider trademarks whose registrations have lapsed. If a senior user registered their trademark, but did not keep the registration alive by filing the appropriate paperwork.

A senior user may petition the United States Patent and Trademark Office to cancel a registration on the basis of prior use pursuant to Section 14 of the Trademark Act, 15 U.S.C. § 1064. In a cancellation proceeding, to establish priority on a likelihood of confusion claim brought under Section 2(d) of the Trademark Act, a senior user must prove that, that it owns a trademark previously used in the United States and not abandoned.” Trademark Act § 2(d). A senior user may establish its own prior proprietary rights in a trademark through actual use, use analogous to trademark use, or an earlier constructive use date.

HOVERFLY TECHNOLOGIES, INC., v. HOVERFLY INC., 3:20-cv-13007 (E.D.MI 2020) involves a situation where the senior user of a trademark allowed their registration to lapse and is now fighting to get a junior user’s registered trademark canceled.

Plaintiff first stated using the trademark HOVERFLY to sell drones in 2010. Plaintiff website is hoverflytech.com. On March 20, 2012, the USPTO placed Plaintiff’s HOVERFLY trademark on the principal trademark register, Registration No. 4114672. In 2018, Plaintiff forgot to file a “Section 8” declaration of continued use with the USPTO and the registration was canceled in October 2018. Despite the cancellation Plaintiff continued to use the HOVERFLY trademark to brand its products.

Defendant is in the business of drone photography and video servicing for business, including for real estate, aerial
inspections, and construction. Defendant hires drone pilots to perform these services. Defendant’s website is www.hoverflyinc.com. In 2017 Defendant filed an application to register the trademark HOVERFLY for aerial photography services. The application was published for opposition on August 15, 2017 and placed on the principal register May 1, 2018, Registration No. 5460451.

In November 2020 Plaintiff sued Defendant for trademark infringement under 15 U.S.C. § 1125(a) of the Lanham Act which is appropriate for unregistered trademarks. Plaintiff seeks to cancel Defendant’s trademark registration and get damages for trademark infringement. While this may seem like a simple case because the trademarks are almost identical, Plaintiff has its work cut out for them. Because Plaintiff’s tradeamark registration lapsed they are not entitled to the presumptions the Lanham Act grants a registered trademark. Further Plaintiff will need to demonstrate a likelihood of consumer confusion, which is not guaranteed because Plaintiff sells physical drones, while Defendant offers aerial photography services produced with drones.

The main takeaway from this case is make sure to set a reminder to file the appropriate paperwork to renew your trademark registration.

If you have questions or comments please email us at: admin@uspatentlaw.cn