Chapter 4: Use

Question 1

Use As A Jurisdictional Prerequiste

Answer 1

1. “use in commerce” requirement ensures that the federal trademark regime remains within Congress’s Commerce Clause powers
2. use determines who initially owns federal TM right
3. General rule: actual trademark use is a prereq for obtaining common law trademark rights protectable under 43(a)
4. In contrast, either actual or constructive trademark use may supply the basis for applying for rights for federal registration
5. Don’t need use to file but need use to have rights
6. If you don’t use it, you lose it

Question 2

Section 45 Lanham Act

Answer 2

1. The term “trademark” includes any word, name, symbol, or device, or any combination thereof:
2. (a) USED by a person, or
3. (b) which a person has a BONA FIDE INTENTION TO USE in commerce and applies to register

Question 3

Actual Use as a Basis for Establishing Rights

Answer 3

1. The reliance on “first to use” regime distinguishes TM from other IP
2. 45: the mark must be physically associated with the goods, and those goods must be sold and transported in commerce
3. “use in commerce”: commercial use
4. disputes: determining WHEN use occurred, not whether use occurred
5. sales aren’t a requirement

Question 4

Aycock Engineering v. Airflite

Answer 4

Must meet both:
1. use the mark in the sale or advertising of a service
2. show that the service was either rendered in interstate commerce or rendered in more than one state or in this and a foreign country by person engaged in commerce

• Rule: A service mark that has only been used in preparation for offering a service in commerce, such as in advertisements for a future business, will not satisfy the actual use requirements of service mark registration.
• At the very least, there must be an open and notorious public offering of the services to those for whom the services are intended

Question 5

Rendered in commerce

Answer 5

even if a party completes the initial sale of its services only after its opponent has done so, that party still could establish prior use of the contested mark based on prior non-sales activities

Question 6

Used or displayed in the sale or advertising of services

Answer 6

1. the TTAB applies a direct association requirement to assess whether a mark has been used or displayed in the advertising of services
2. the mark must be used in such a manner that it would readily be perceived as identifying the source of the services

Question 7

Placing marks on goods: the affixation requirement

Answer 7

1. modern approach to affixation (common law and stat) is less rigid
2. i.e. even if a mark is not physically affixed to goods, uses of the mark on point of sale displays, price lists, mail solicitations, advertisings, etc. can now suffice to establish TM use

Question 8

Prior Use

Answer 8

1. an open and notorious public use;
2. directed to the segment of the purchasing public for whom the services are intended; and
3. carried out in a manner sufficient to inform or apprise prospective purchasers of the present or future availability of service under the mark
4. analogous use must (eventually) be followed by an actual use in order to serve as a basis for priority

Question 9

Planetary Motion v. Techplosion

Answer 9

Prior use test (totality of circumstances):
1. Adoption and
2. Use in a way sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind as those of the adopter of the mark, is competent to establish ownership, EVEN WITHOUT evidence of actual use
3. Rule: Unregistered marks will be afforded trademark protection only if the mark was in actual use in commerce in a manner sufficient to establish ownership rights.
4. Takeaway: even though no money was exchanged between Daraah and his customers, use may still be established

Question 10

Illegal Use

Answer 10

1. unlawful uses are not uses in commerce
2. no legal use = no legal right

Question 11

Tacking

Answer 11

Permitted in exceptionally narrow circumstances
1. a company which modifies/modernizes their logo will have its rights follow from the first logo as long as the feel doesn’t change–the rights will tack on with no gaps
2. in general, courts require that the prior mark be the “legal equivalent” of the later mark such that consumers would consider the two to be essentially the same–overall commercial impression of the logo is the same to consumers
3. don’t have to refile your logo unless major change

Question 12

Brookfield v. West Coast (tacking standard)

Answer 12

Tacking standard:
1. the two marks are similar such that consumers would regard them as essentially the same
2. the marks must create the same continuing commercial impression, and the later mark should not materially differ from or alter the character of the mark attempted to be tacked (extremely strict)

Question 13

TLRA 1988

Answer 13

1. Trademark Law Revision Act of 1988: Congress recognized concept of “constructive use”
2. Constructive use enable applicants to file for registration based on an “intent to use” a mark in commerce and providing the registration would be contingent on the “intent to use” maturing into actual use

Question 14

Token use

Answer 14

1. mere token use: use insufficient to qualify as actual use
2. unnecessary and inappropriate under the “intent to use” application system
3. uses of a trademark that are purely for the purpose of SECURING RIGHTS in a that mark, as opposed to any true interest in or expectation of making commercial sales

Question 15

Bona fide intent to use

Answer 15

1. 1(b) and 7(c)
2. when applicant files a “bona fide intent to use” application, the mark is deemed to be in use as of the application filing date
3. “constructive use priority”

Question 16

Constructive use

Answer 16

1. 7(c): constructive use confers priority of right over any other person EXCEPT for a person whose mark has not yet been abandoned AND who, prior to such filing:
2. has used the mark;
3. has filed a application to register the mark which is pending or has resulted in registration of the mark; OR
4. has filed a foreign application to register the mark on the basis of which he or she has acquired a right of priority, and times files an application under 44(d) to register the mark which is pending or has resulted in registration of the mark

Question 17

Doubtful bona fide intention

Answer 17

1. filing many applications for same mark on large number of products
2. filing many applications for numerous marks on the same product
3. repeatedly refiling ITUs to replace prior ITUs that have lapsed

Question 18

Verified statement that trademark is used in commerce: 1(d)

Answer 18

1. within 6 months after the date on which the notice of allowance is issued to an applicant under 1(b), applicant files verified statement that mark is in use in commerce
2. specify date first used and the goods or services used
3. may exten the time for filing with request

Question 19

Warnervision Entertainment

Answer 19

1. The owner of an intent-to-use trademark application cannot be enjoined from using a mark to complete registration based solely on the fact that another party began using the mark in commerce after the owner’s application was filed.
2. As long as an ITU applicant’s privilege has not expired, a court may NOT enjoin (prohibit) it from making the “use” necessary for registration on the grounds that another party has used the mark subsequent to the filing of the ITU application.

Question 20

Surrogate uses

Answer 20

TM use by someone other than the TM owner may unure to the TM owner’s benefit

Question 21

Uses by Affiliates

Answer 21

1. The first use of a mark by an entity that is controlled by the registrant or application for registration of the mark inures to the benefit of the controlling entity
2. Related-Companies Doctrine: requires a showing of substantial relationship between using entity and controlling entity
3. parent-subsidiary or licensee-licensor relationship

Question 22

Coca-Cola

Answer 22

1. Public associated “Coke” with Coca-Cola
2. Rule: a brand name that has acquired secondary meaning is entitled to trademark protection (developed when a mark associated with a product becomes in the public’s perception automatically associated with the producer of the product)
3. An entity may have a protectable property right in a term, even if the company itself has made no use of the term, provided that the public has come to associate the term with the entity or its goods or services (producer must encourage though)

Question 23

Abandonment: Non-Use

Answer 23

1. when its use has been discontinued with intent not to resume such use (can inferred from circumstances)
2. non-use for 3 consecutive years shall be prima facie evidence of abandonment
3. “use” means bona fide use made in ordinary course of trade not made merely to reserve a right in a mark

Question 24

Abandonment: Failure to enforce/control

Answer 24

1. Abandonment may occur when a mark owner simply fails to police uses by unrelated third parties, or attempts to police them but fails (mark becomes generic)
2. when any course of conduct of the owner, including acts of omission as well as commission, causes marks to become the generic name for the goods or services on or in connection with which it is used
3. or otherwise to lose its significance as a mark
4. purchaser motivation shall NOT be a test for determining abandonment

Question 25

Abandonment

Answer 25

1. a TM owner must continue to demonstrate use or at least control over use in order to maintain TM rights
2. courts place burden on mark challengers to show abandonment
3. actual use is required in order to maintain rights in registration
4. 8: requires registrants on the principal register to file an affidavit of continued use in commerce during the 6th of US registration (if it fails, PTO automatically cancels registration)

Question 26

Emergency One v. American Fireeagle

Answer 26

1. When a TM ownder seeks to overcome abandonment by showing of intent to RESUME use, the evidence must show that the TM owner contemplates resumption in the REASONABLY FORSEEABLE future.
2. Non-token use that reserves a mark must be for or on a particular product

Question 27

Abandonment: Naked Licensing

Answer 27

1. Naked licensing of TMs is licensing marks without control of quality
2. A naked license allows use of the TM on goods or services for which the TM owner cannot offer a meaningful assurance of quality
3. without such control, the mark may cease to provide a guarantee of CONSISTENT QUALITY, and consumers who rely on mark may be MISLEAD

Question 28

Ways to demonstrate adequate quality control

Answer 28

1. by pointing to express quality control provisions in license agreement
2. by demonstrating that the licensor in fact exercised control over quality even in the absence of express provisions in the license
3. that the licensor reasonably relied upon the licensee to maintain quality control in view of some special relationship amongst the licensing parties (i.e. long term business relationship)
4. courts impose a heavy burden on the person asserting a lack of reasonable control by a licensor

Question 29

Stanfield v. Osborne

Answer 29

1. Naked license: A party who licenses its trademark without exercising adequate quality control over the licensee’s use of the mark, loses its trademark rights
2. A licensory must take reasonable measures to avert misuse of the mark by its licensee
3. The absence of an express contractual right of control does not automatically result in abandonment of mark, as long as licensor in fact exercised sufficient control over its license
4. P could not rely on D’s quality control and P had no relationship with D

Question 30

University Book Store v. University of Wisconsin

Answer 30

1. Implied quality control can be inferred through reasonable reliance or special business relationship with third parties
2. Allowing third party use does NOT equal abandonment; only occurs when a mark loses its significance
3. Started off as expressions of community support and goodwill (royalty free, non-exclusive, implied license to use)
4. Third party use opened University to liability
5. University has good reason to seek licensing now: prospect of embarrassing, obscene or inappropriate uses of marks, potential product liability problems, and nature of market for merchandise imprinted with college indicia has undergone major change