Sandro Andy v. Light Inc.

U.S. DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
Intellectual Property

New York Law Journal

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District Judge Harold Baer

France's Sandro Andy sells clothing under the SANDRO trademark. Registered in February 2010 under Lanham Act 66(a)—the Madrid Protocol—the mark had a May 2008 constructive use date. Apparel maker Light used its own SANDRO mark since 1999. The court denied dismissal of Light's bid to cancel Sandro Andy's mark for lack of bona fide intent to use that mark for 250 identified items. Sandro Andy was directed to delete goods that it will not use from its overbroad registration. No decisions addressed cancellation of a Madrid Protocol registration for lack of bona fide intent. At issue was if Sandro Andy used its mark and abandoned it, or never intended to use the mark. In refusing Light's claim that Sandro Andy's entire registration should be deemed void due to lack of a bona fide intent to use in commerce each and every good listed thereon, the court concluded that having successful navigated the trademark application and extension processes Sandro Andy was entitled to a presumption of validity. Citing Collagenex Pharm v. Four Star Partners, the court found Light upended its burden of persuasion in suggesting that an applicant need do more than prepare in good faith a declaration of bona fide intent.

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