What can you do when you want to use or register a trademark that someone else has already registered but who, you suspect, is no longer using it? This was the issue recently facing one of Shift Law’s clients. They had been using the trademark, BROADVIEW, in association with their financial services for years. But, when they went to register it, they discovered that it was already registered for financial services in Canada by a large U.S. institution. While they suspected that the U.S. company might not be using the trademark in Canada, the registration was a problem nevertheless. It was blocking their own application to register BROADVIEW and posed an infringement risk.
Ultimately, Shift Law persuaded the Register of Trademarks on behalf of its client to invalidate the existing BROADVIEW registration on the basis of the “use it or lose it” principle: Shift Law v. Jefferies Group, Inc., 2014 TMOB 277. The Register of Trademarks agreed with Shift Law's submissions that the registrant’s evidence of use of the trademark in Canada was not sufficient to maintain the registration. This cleared the way for Shift Law's client to register their own BROADVIEW trademark and to continue using it without the risk of getting sued.