Since 2008, The Trademark Helpline has been committed to ensuring our clients get their trademark applications right the first time. Our Trademark Clearance Audit Service (formerly known as the Full IP Report) has always been the first essential step. However, the recent Supreme Court ruling in the SkyKick v. Sky case has led us to refine our strategy further to align with the latest guidance.
Historically, we advocated for broad trademark classifications, but this latest ruling highlights the importance of being specific and realistic in your trademark filings. If your business doesn’t intend to use a term or classification in the next 10 years, we recommend leaving it out of your application. This reduces the risk of a bad faith claim and helps avoid unnecessary costs and potential issues down the line.
Our Monitoring and Representation Services will notify you of any potential infringements or issues post-registration. However, if you’re perceived as “squatting” on classes or terms, your trademark could be challenged for bad faith.
Of course, every application is unique, which is why we always prefer to run through your trademark clearance audit over video call to ensure that we fully understand your business goals and objectives when it comes to your trademark.
Your trademark application is only right if it’s right for you.
Schedule an initial chat online to discuss your trademark needs and ensure you’re on the right path.
Read our full guide on the ruling below and understand how we can help you navigate this evolving landscape to protect your brand!
The Supreme Court Ruling: A Game Changer for Overly Broad Trademark Filings
Questions about this
How has the SkyKick v Sky ruling changed trademark filing strategy?
The Supreme Court ruling in SkyKick v Sky highlighted the importance of being specific and realistic about the goods and services a trademark application covers, because overly broad filings can attract a bad faith claim. Historically we advocated broad classifications. We now recommend leaving out any term or class a business does not intend to use within the next 10 years, which also avoids unnecessary costs.
Answered by Jonathan Paton, Founder & CEOCan a trademark be challenged for covering terms the owner does not use?
Yes. If an owner is seen as ‘squatting’ on classes or terms it has no realistic intention of using, the trademark could be challenged for bad faith. Keeping the specification to what the business sells now and where it is realistically heading reduces that risk. Unused terms are vulnerable later too, since after five years on the register a challenge can strip out the categories the owner never traded in.
Answered by Jonathan Paton, Founder & CEOWhy does a clearance audit matter more after the SkyKick ruling?
Our Trademark Clearance Audit, formerly the Full IP Report, has always been the first step before filing. Since SkyKick, the specification needs more care, so we prefer to run through the audit over a video call to understand a business’s goals before deciding what to protect and in which classes. An application is only right if it is right for that business, and the audit is where that is worked out.
Answered by Jonathan Paton, Founder & CEO
