IP Law Daily, TRADEMARK—S.D. Ohio: Claim for cancellation of a trademark registered to a former supplier based on functionality may proceed, (Aug 25, 2026)

By Nadine E. Roddy, J.D.

However, the claim based on abandonment was not plausibly stated, as the complaint reflected that the product at issue was still in commerce.

A company that engineered self-locking fasteners used in the aerospace industry plausibly stated a claim for cancellation of a trademark registered to a former supplier of fasteners based on functionality, a federal district court in Ohio has ruled. The cancellation claim based on abandonment, however, was insufficiently stated (Long-Lok, LLC v. Safety Socket, LLC, No. 1:25-cv-00346-JPH (S.D. Ohio Aug. 21, 2026)).

The case arose from a trademark dispute between parties that had done business together for an extended period, the plaintiff Long-Lok, LLC (Long-Lok) and the defendant Safety Socket, LLC (Safety Socket). For more than 50 years, Long-Lok had engineered self-locking fasteners used in aerospace applications. Rather than manufacture fasteners from raw materials, Long-Lok simply took standard fasteners supplied by a customer—or purchased fasteners requested by a customer from a manufacturer/distributor such as Safety Socket—and modified the fasteners for the customers. Until it got out of the fabricating business, Safety Socket had for many years been a manufacturer of high-strength fasteners, along with socket-head cap screws, for commercial and military applications. The parties’ dispute concerned modifications made by Long-Lok to Safety Socket’s socket-head fasteners.

According to Long-Lok, Safety Socket transitioned in 2023 from a manufacturing-and-service company to a company solely providing services. At some point thereafter, the parties’ relationship soured, and in 2025 Safety Socket sent Long-Lok a cease-and-desist letter. It asserted that Long-Lok’s modification, distribution, and sale of Safety Socket fasteners infringed Safety Socket’s trademark rights. Long-Lok responded by filing suit, seeking cancellation of the “Banded Knurl Mark” under 15 U.S.C. § 1064. Long-Lok alleged that the Mark was functional because the two bands of diagonal knurls provided a better grip when using the fastener to affix components, were essential to the fastener’s use or purpose, and affected its quality. Further, Long-Lok alleged that Safety Socket’s exclusive use of the feature hindered competitors’ ability to create an equivalent gripping mechanism. As an alternative basis for cancellation, Long-Lok alleged that Safety Socket had abandoned the Banded Knurl Mark when it ceased manufacturing products in 2023 and did not intend to resume use of the mark.

Long-Lok also sought a declaratory judgment that Safety Socket had abandoned its trademark rights in the Banded Knurl Mark and that abandonment would bar a future infringement claim by Safety Socket. Before the court was Safety Socket’s Rule 12(b)(6) motion to dismiss two of Long-Lok’s eight claims.

Outside-the-complaint materials. As an initial matter, the court declined Safety Socket’s invitation to take judicial notice of certain U.S. Patent and Trademark Office and Trademark Trial and Appeal Board filings as well as various judicial proceedings, finding that they were offered as evidence of matters in contention. For the same reason, the court would not consider declarations made by Safety Socket’s CEO and by its lead trial counsel.

Functionality and abandonment. Long-Lok’s trademark cancellation claim based on the Lanham Act’s functionality provision asserted that the Double Banded Knurl feature at the top of the fastener was “essential” because “it confer[red] the specific, utilitarian, and functional advantage of a better grip to consumers to aid in using the fasteners to affix various components to one another.” Noting that the plausibility of this allegation “rest[ed] on the thinnest of reeds,” the court nonetheless determined that the parties’ competing factual assertions and counter assertions about whether the Banded Knurl design provided a meaningful utilitarian benefit in the context of socket-head fasteners could not be resolved at the pleading stage.

As for the Lanham-Act-based claim of abandonment, the court held that the complaint did not plausibly state a claim as presently pleaded. Although the complaint alleged (1) that Safety Socket discontinued use of the Banded Knurl Mark as late as 2023 when it stopped manufacturing products with that mark, (2) that it used the Mark exclusively on its manufactured fasteners, and (3) that it publicly announced its transition from a manufacturing and service company to purely a service company, the complaint also alleged (4) that Long-Lok continued to modify fasteners bearing the Mark—which raised an inference that the Mark still existed in commerce. The abandonment claim would be dismissed without prejudice.

Declaratory relief. For the same reasons, Long-Lok’s request for declaratory judgment based on abandonment would be dismissed without prejudice.

For these reasons, the court granted Safety Socket’s Partial Motion to Dismiss in part and denied it in part. Long-Lok was permitted leave to amend to cure the deficiencies stated in the court’s opinion within 14 days of the date of the order.

The Case is No. 1:25-cv-00346-JPH.

Judge: Hopkins, J.

Attorneys: Petra G. Bergman (Vorys Sater Seymour and Pease LLP) for Long-Lok, LLC. Neal J. Barkan (Barkan Meizlish Derose Cox, LLP) for Safety Socket, LLC.

Companies: Long-Lok, LLC; Safety Socket, LLC

Cases: Trademark OhioNews