2.01 USE IN COMMERCE Flashcards
OWNERSHIP OF A MARK REQUIRES USE
Blue Bell v. Farah Manufacturing (5th 1975)
PURPOSE TM = “The primary, perhaps singular purpose of trademark is to provide a means for the consumer to separate or distinguish one manufacturer’s goods from those of another.”
GETTING TM = “Ownership of a mark requires a combination of both appropriation and use in trade … Sale not sin qua non [but important factor to consider] …”
MEANING = Trademark Requires USE … Getting Consumer to Association Your Mark
OWNERSHIP OF A MARK REQUIRES USE
Restatement of Competition Third § 18
“A designation is ‘used as a trademark … When [it] is displayed or otherwise made know to prospective purchasers in the ordinary course of business in a manner that associates the designation with the goods, services, or business of the user.”
FEDERAL REGISTRATION and USE
A. ACTUAL USE
B. INTENT TO USE
C. But See FOREIGN PRIORITY
D. LOSS OF MARK
A. ACTUAL USE, Sec. 45
White v. Paramount Pictures (Fed. Cir. 1997)
USE IN ORDINARY COURSE OF TRADE
FACTS = Paramount (Star Trek) Challenging “Romulans” Band Connect Dots Game, Sparsely Sold without any Semblance of a Business
HOLDING
- Need “Bona Fide” Use is Commerce … Insufficient Use
- Revision Act of 1989 Replaced “token” exclusion with “use in the ordinary course of trade” … Sec. 45 requirement = Varies for Industry to Industry
NOTE: Pretty Much the Same Standard, but More Articulate … “Ordinary Course”
B. INTENT TO USE, Sec. 45
SmithKline v. Omnisource (TTAB Nov. 29, 2010)
FACT: Opposition by AQUAFRESH Against the AQUAJET Application
MEANING = EVIDENTIARY SHOWING REQUIRED TO SHOW INTENT TO USE
Opposition to Filing of Intent to Use Has BURDEN by PREPONDERANCE OF EVIDENCE
PREPONDERANCE Shown By Applicant Failing to Provide Evidence of Intent
- Testimonial Evidence of Intent REQUIRES Corroborating Documentation
- NEED DOCUMENTATION OF SOMETHING: Manufacturing; Licensing; Test Marketing; Correspondence; Business Plans; Labels; Marketing / Promotional Materials; Pricing Models
NOT A HIGH BURDEN … But Must Show Something
C. FOREIGN PRIORITY, Sec. 44
In re Societe d’Exploration de la Marque de Fouquet’s (TTAB 2003)
Foreign Trademark (Application or Registration) = Federal Recognition (Regardless Foreign Use) Sec. 44(d) = PRIORITY to Foreign Application if US Application Filed … Paris Convention
Foreign Mark MUST BE Valid / Current at Time of Suit, POLICY: “It must be remembered … not yet used the mark in commerce … Sec. 44 should be construed narrowly.”
NOTE: Case = Get Priority in US IF Valid / Current w/o Use
NOTE: Cannot Sue in the United States W/O USE in the US
Meaning Need to Search Foreign Files to Prevent “Ambush” by Foreign Applicant
D. LOSS OF TRADEMARK, Sec. 45
ABANDONMENT, Lanham Act Sec. 45
A. Use discontinued with intent not to resume such use … inferred from circumstances … presumption after 3 consecutive years
B. Cause of Conduct of the Owner, Omission or Commission, Becomes Generic OR Otherwise Loses Significance as Mark
Common Law = Stop Using
REGISTRATION vs. COMMON LAW RIGHT
Zazu Designs v. L’Oreal (7th 1992) (Easterbrook)
FACTS: Zazu Salon in Illinois vs. L’Oreal’s National Flop
- L’Oreal did extensive research and even purchased a registered conflicting mark
- Zazu selling a lightly marked product when L’Oreal came in started putting something out.
GETTING TM = … See also at 37
SCOPE of TM = “The district court erred in equating a use sufficient (IL Salon) to support registration with a use sufficient to generate nationwide rights in the absence of registration.”
GEOGRAPHIC LIMITATIONS
Senior vs. Junior PARTY / USERS of the Mark
Four Possibilities
- NO Federal Registration
- Senior Registers BEFORE Junior First Uses
- Senior Registers AFTER Junior First Uses
- Junior Registers BEFORE Senior First Uses
- NO Federal Registration
COMMON LAW RULES
Common Law Rules Default Rules for Uses Prior to a Federal Registration, BUT Federal Liability NOT Predicated on Reg.
RULE FOR TM
(1) First to Use in an Area
(2) Requires Ignorance of Other’s Mark … Knowledge Of Infers Intent Take Benefit of Other’s Use
BALANCING = “Zone of Expansion” Doctrine, Allows TM to Continue in “Natural Area”
- Senior Registers BEFORE Junior First Uses
Dawn Doughnut v. Hart’s Food Stores (2d 1959)
PREQUISITE: Senior Party MUST Be Competing with Junior Party to Enforce Trademark
- Sec. 1072, Federal Registration = Constructive Notice
- Sec. 1127, Abandonment = Only Applies When Failure to Use Federal Mark is National Failure
FACTS: National distributer of Dawn bakery mixes challenging local grocery shop’s use of Dawn Doughnuts
OUTCOME = NO INJUNCTIVE RELIEF, because NO Risk / Likelihood of Consumer Confusion w/n Distinct Market Areas of National Brand NOT in Local Market of Local Brand, No Evidence National Brand is Entering Local Market
MEANING = Junior Party May Use TM Until Senior Party Enters the Market
MINORITY RULE, Circuit City Stores v. Carmax (6th Cir. 1999) … Market Entry NOT Required to Get an Injunction … But see eBay (Patent Case on Injunctive Relief)
NOTE: Internet Changing Definition of Market Entry
- Senior Registers AFTER Junior First Uses
Burger King of FL v. Hoots (7th 1968)
FACTS: Senior Party, Burger King of FL Registered After Junior Party, Hoots “BK” Mark in Illinois
OUTCOME = Federal Registration Priority Nationally, EXCEPT for C.L. Market Area of Junior
Sec. 1115 = C.L. Use is Defense Against Fed. Stat. Registration IF D/N Know
Supremacy / Preemption = Federal Stat. OVER State Stat. … State Registration Does NOT Give Monopoly State Wide
4. Junior Registers BEFORE Senior First Uses Weiner King (CCPA)
FACTS: Junior User is a Big Company with 134 Restaurants in 34 States REGISTERS Federally AFTER Senior User / Small Company with 3 Restaurants Operating
FEDERAL APPLIES WITH PROTECTION OF COMMON LAW RULES
MEANING: Federal Registration Limited by Senior User’s Natural Area of Expansion
- Senior Use Allowed to Expand AFTER Fed. Registration in Natural Area
- Senior User’s Expansion is Limited to “Natural Zone”
Senior User Looses to Fed. Reg. of Junior Party WHERE Junior Party Competes
LOOK AT POLICIES: Use, Not Driving Out Small Businesses, Consumer Confusion
