Plaintiff ZipSleeve, LLC had registered its ZIPSLEEVE trademark* but the registration lapsed for failure to file a declaration under Section 8 of the Trademark Act. ZipSleeve filed a new application, which hasn’t registered yet. ZipSleeve sued West Marine Inc. for trademark infringement under 15 U.S.C. § 1114, which is for infringement of a registered trademark. Some of the alleged infringement occurred before the registration lapsed. As the court notes,
The question before the Court is therefore simple, but one on which direct authority is scant: Does the owner of a mark that was properly issued, but which has since been canceled, have a cause of action under § 1114 for infringement that occurred while the mark was valid?
And the answer is … no, ZipSleeve did not state claim for infringement of a registered trademark, even for the period of time during which the mark was registered:
A statutory cause of action “extends only to plaintiffs whose interests fall within the zone of interests protected by the law invoked.” Lexmark, 134 S. Ct. at 1388. The constructive notice to competitors and evidentiary presumptions afforded the registrant are among the most important rights a trademark registrant has under the Lanham Act. By contrast, the right to exclude others from use of the mark comes not from registration, but merely from priority of use of a protectable mark. And that right may be protected, in the absence of a registered trademark, using § 1125(a). The weight of authority thus clearly indicates that Congress sought to protect only the interests of plaintiffs with registered trademarks under § 1114. Plaintiffs with unregistered trademarks are protected by § 1125(a), but do not fall within the zone of interests protected by § 1114. Therefore, the owner of a mark that was valid when issued but which has since lapsed has no cause of action under § 1114—not even for infringement that occurred during the lifetime of the mark.
ZipSleeve, LLC v. West Marine, Inc., No. 3:14-cv-01754-SI (D. Or. May 18, 2015).
* The USPTO registration record lists the owner as Robert Niehaus with no record of an assignment. The new application to replace it also lists Robert Niehaus as the owner. I’m not sure why the court says that ZipSleeve, LLC was the owner. Mr. Niehaus is also not a party to the suit.
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