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Trademark Law

Trademark Law. Sept. 18, 2006 Week 4 Chapter 3 - Acquisition of Trademark Rights Chapter 4 - Registration of Trademarks Reading Pgs. 162-190 (suppl. Beginning on 189) Pgs. 191-213 (suppl.). Review - Acquisition of Trademark Rights. How does a mark-owner acquire rights in a mark?

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Trademark Law

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  1. Trademark Law • Sept. 18, 2006 • Week 4 • Chapter 3 - Acquisition of Trademark Rights • Chapter 4 - Registration of Trademarks • Reading • Pgs. 162-190 (suppl. Beginning on 189) • Pgs. 191-213 (suppl.) Trademark Law

  2. Review - Acquisition of Trademark Rights • How does a mark-owner acquire rights in a mark? • Use in Commerce • Post 1989 - Intent to Use applications (aka an ITU application)… but more on this today Trademark Law

  3. Review - Use of TMs • Use in commerce • used in a way sufficiently public to identify or dist. the marked goods in an appropriate segment of the public mind as those of the adopter of the mark • use must real, not sporadic, nominal or intended solely for trademark maintenance • means the bona fide use of a mark in the ordinary course of trade • not a use if made merely to reserve a right in a mark • not a use if its secret use or merely an internal use • N.B. the meaning of commerce in the registration context is the same as the meaning in the infringement context Trademark Law

  4. Review – Use of TMs • What does “use in Commerce” mean? • use within the meaning of the Lanham Act • See 15 U.S.C. §1227 pgs. 146-7 “means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” Trademark Law

  5. Review – Ownership • Ownership (aka who owns a mark) • (1) identify the quality or characteristic for which the group is known by the public; • (2) then determine who controls that quality or characteristic Trademark Law

  6. Priority of Use • Priority – who used the mark first • Blue Bell v. Farah Mg. (5 th cir. 1975) [162] • Timeline of events is often necessary • N.B. “the question of use adequate to establish appropriation remains one to be decided on the facts of each case” • First – [was there] adoption [by the mark owner] • Second – [was their] use in a way sufficiently public to identify or dist. the marked goods in an appropriate segment of the public mind as those of the adopter of the mark • N.B. no need to affix the mark to the good • Packaging, advertising, etc. will work Trademark Law

  7. Priority of Use • Priority – who used the mark first • Blue Bell v. Farah Mg. (5 th cir. 1975) [162] • Note that the prior “token sale” doesn’t, per se, invalidate an application for the mark – but the owner cannot rely on that earlier date, and in my opinion an application to register the mark by relying on the “token sale” could taint the registration (i.e. don’t say its used in commerce if its not). Trademark Law

  8. Priority of Use • Shalom Children’s Wear v. In-Wear (TTAB 1993) [170] • General rule – first to use wins! • General rule – an ITU creates constructive use priority date. • Applicant – party filing applicant that is the subject of the opposition • Opposer – party opposing registration of the application Trademark Law

  9. Priority of Use • Analogous Use – use analogous to trademark use – but not adequate use to establish “technical use” (that is, can’t register the mark based on this use, but can use it to establish priority rights against subsequent users • E.g., taking orders for goods bearing the mark • Note the analogous use must be open and public (i.e., not a secret use. In Teletrac case in problem on pg 173, some 35,000 post cards were sent to public. Trademark Law

  10. Types of Use • Technical use – use which can be used to register the mark • Constructive use – created by filing ITU • Analogous Use – use analogous to trademark use • not adequate use to establish “technical use” • can be used to establish priority rights against subsequent users • Token use – use merely made to create TM rights (not adequate to establish rights) Trademark Law

  11. Priority of Use • MD Stadium Auth. v. Becker (D.Md 1992), aff’d 4th Cir. (1994) [174] • Well-known ball park name (it was very public) • Local t-shirt vendor Trademark Law

  12. Priority of Use • N.B. Judge is a big-time fan; fn. 3. • You represent D, is there another argument that might win the day? Trademark Law

  13. Concurrent Use • So, what happens when two marks collide • Most often – similar/identical goods, but geographically separate… then expansion by one creates confusion • United Drug Co. v. Theodor Rectanus Co.(US 1918) Trademark Law

  14. Concurrent Use • So, what happens when two marks collide … TODAY • Prior user keeps their geography (can’t expand) • Federal Reg. mark expands nation-wide (except for prior user’s geography) • 15 U.S.C. 1115(b)(5) provides a so-called "limited area" defense • Use prior to registration and w/out knowledge of other user (ie. “good faith”) • local area market as of date of registration • continuous use in pre-registration area • “frozen rights” Trademark Law

  15. Concurrent Use • Dawn Donut Co. v. Hart's Food Stores (2nd Cir. 1959) [188] • No likelihood of confusion b/c of the distinct geographic areas; therefore no injunction. • But if the registered user were to expand it could then obtain one • N.B. not followed in all cir. • 4th Cir. Emergency One v. American Eagle Fire Apparatus (4th Cir. 2003) [Suppl. pg. 52] Trademark Law

  16. Acquisition of TM Rights • Intent to Use Applications • 1988 Trademark Revision Act • Broadened definition of use • Removed so-called token use doctrine • Added Intent to Use application Trademark Law

  17. Intent to Use Applications 1. Broadened definition of use • Mark no longer needed to be affixed to goods “[mark] is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale… Trademark Law

  18. Intent to Use Applications 2. Abolishes the token use doctrine to (the extent that doctrine was still viable) by re-defining use in commerce to mean: "the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.“ • This basically codified the case-law on point at the time Trademark Law

  19. Intent to Use Applications 3. Created the Intent to Use Application • 15 USC § 1051(b), Lanham Act §1(b) [191] A person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may apply to register the mark on the principal register Trademark Law

  20. Intent to Use Applications • The 1988 act also prohibits trafficking in marks • 15 USC § 1060; Lanham Act §10 A registered mark or a mark for which application to register has been filed shall be assignable with the goodwill of the business in which the mark is used, or with that part of the goodwill of the business connected with the use of and symbolized by the mark. However, no application to register a mark under section 1(b) shall be assignable prior to the filing of the verified statement of use under section 1(d), except to a successor to the business of the applicant, or portion thereof, to which the mark pertains, if that business is ongoing and existing… Trademark Law

  21. Intent to Use Applications • Trafficking in marks • Why not allow this? • For a registered mark – why require selling both the mark and the goodwill of the business • For an ITU – why require an Statement of Use be filed first, except to a successor to the business • However, you can see an ITU in connection with the sale of business assess and efforts related to the mark Trademark Law

  22. Intent to Use Applications • Assigning of ITU prior to filing Statement of Use • Voids the application • The Clorox rule Trademark Law

  23. Intent to Use Applications • Question: What is the effect of Fraud in procuring a TM application? • Answer: the application is void and any registration will be cancled. • Medinol Ltd. V. Neuro Vasx (TTAB 2003) [Suppl. Pg 38] • Even if the so-called fraud seems like a mistake? Trademark Law

  24. Intent to Use Applications • Question: Can an Opposer attack an ITU based on its use subsequent to the ITU’s filing? • Zirco Corp. v. Americna T&T (TTAB 1991) [pg 198] Trademark Law

  25. Intent to Use Applications • Question: Can ITU Applicant be enjoined from making the necessary use to perfect its mark? • WarnerVision Ent. v. Empire of Carolina (2nd Cir. 1996) [201] Trademark Law

  26. Intent to Use Applications • Can the TTAB create a presumption in favor of the ITU Applicant that a mark is inherently distinctive? • Eastman Kodak v. Bell & Howell Doc. Mg't Prod. co. (Fed Cir. 1993) [205] • What should Opposer do? Wait until use is made, then file cancellation proceeding if not inherently distinctive in view of actual use • But note, [pg. 210] this doesn’t mean TTAB never reviews ITUs for descriptiveness during initial exam. Trademark Law

  27. Next Week • Chapter 4 - Registration of Trademarks • Reading on website (n.b. a fair amount next week). • Pgs. 214-230, suppl. pgs 42-59 • 252-287 (suppl.; note deleted case(s)) Trademark Law

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