The International Comparative Legal Guide to:
Trade Marks 2012
First Edition
A practical cross-border insight into trade mark work
Published by Global Legal Group, with contributions from:
Abreu Advogados
Kasznar Leonardos
Anderson Mori & Tomotsune
Law Offices of Patrinos & Kilimiris
Arochi, Marroquín & Lindner
Loyens & Loeff, avocats à la Cour
Avvocati Associati Franzosi Dal Negro Setti
Nixon Peabody LLP
Baker & McKenzie
Pachiu & Associates
Banwo & Ighodalo
Papacharalambous & Angelides L.L.C
Bereskin & Parr LLP
Patpol Sp. z o.o.
Boga & Associates
Pepeljugoski Law Office
Bristows
Pham & Associates
CCPIT Patent and Trademark Law Office
Quevedo & Ponce
Danubia Patent & Law Office
Dewey & LeBoeuf LLP
Subramaniam, Nataraj & Associates, Patent &
Trademarks Attorneys
DM Kisch Inc
SyCip Salazar Hernandez & Gatmaitan Law Offices
ELZABURU
Tay & Partners
Hengeler Mueller
ThomannFischer
Jadek & Pensa Law Office
Tiplo Attorneys at Law
The International Comparative Legal Guide to: Trade Marks 2012
General Chapter:
1
The Significance of Actual Trademark Use and “Use in Commerce” Under U.S.
Trademark Law – Kristen Mollnow Walsh & Jeffrey L. Costellia, Nixon Peabody LLP
Contributing Editors
Paul Walsh & Dominic
Murphy, Bristows
Account Managers
Dror Levy, Maria Lopez,
Florjan Osmani, Oliver
Smith, Rory Smith, Toni
Wyatt
1
Country Question and Answer Chapters:
2
Albania
Boga & Associates: Renata Leka & Ened Topi
6
3
Belgium
Baker & McKenzie: Pierre Sculier & Elisabeth Dehareng
14
4
Brazil
Kasznar Leonardos: Filipe da Cunha Leonardos &
Claudio Roberto Barbosa
24
5
Canada
Bereskin & Parr LLP: Daniel R. Bereskin, Q.C. & Wynnie Chan
34
6
China
CCPIT Patent and Trademark Law Office: Chumeng (Jessica) Xu
41
Fiona Canning
7
Cyprus
Papacharalambous & Angelides L.L.C: Eleni Papacharalambous
48
Editor
8
Ecuador
Quevedo & Ponce: Alejandro Ponce Martínez &
Roque Albuja Izurieta
56
Bristows: Paul Walsh & Dominic Murphy
62
Sub Editor
Suzie Kidd
Senior Editor
9
Penny Smale
10 France
Dewey & LeBoeuf LLP: Gaëtan Cordier
70
Managing Editor
11 Germany
Hengeler Mueller: Dr. Wolfgang Kellenter & Dr. Andrea Schlaffge
83
12 Greece
Law Offices of Patrinos & Kilimiris: Maria Kilimiris & Manolis Metaxakis
91
Richard Firth
13 Hungary
Danubia Patent & Law Office: Michael Lantos
99
Published by
14 India
Subramaniam, Nataraj & Associates, Patent & Trademarks Attorneys:
Hari Subramaniam
105
15 Italy
Avvocati Associati Franzosi Dal Negro Setti: Vincenzo Jandoli
112
16 Japan
Anderson Mori & Tomotsune: Yasufumi Shiroyama & Ai Nagaoka
120
17 Kosovo
Boga & Associates: Renata Leka & Ened Topi
127
18 Luxembourg
Loyens & Loeff, avocats à la Cour: Véronique Hoffeld
134
19 Macedonia
Pepeljugoski Law Office: Professor Dr. Valentin Pepeljugoski & Ana
Pepeljugoska
142
20 Malaysia
Tay & Partners: Su Siew Ling & Joanne Kong
152
21 Mexico
Arochi, Marroquín & Lindner: María Teresa Eljure
161
22 Nigeria
Banwo & Ighodalo: Femi Olubanwo & Chinasa Uwanna
168
Alan Falach
Group Publisher
Global Legal Group Ltd.
59 Tanner Street
London SE1 3PL, UK
Tel: +44 20 7367 0720
Fax: +44 20 7407 5255
Email: info@glgroup.co.uk
URL: www.glgroup.co.uk
GLG Cover Design
European Union
F&F Studio Design
GLG Cover Image Source
iStockphoto
Printed by
Ashford Colour Press Ltd
May 2012
23 Philippines
Copyright © 2012
Global Legal Group Ltd.
All rights reserved
No photocopying
SyCip Salazar Hernandez & Gatmaitan Law Offices: Enrique T. Manuel
& Vida M. Panganiban-Alindogan
175
24 Poland
Patpol Sp. z o.o.: Anna Zakrocka & Bartłomiej Kochlewski
182
25 Portugal
Abreu Advogados: João Veiga Gomes & João Gonçalves Assunção
192
ISBN 978-1-908070-27-2
ISSN 2049-3118
26 Romania
Pachiu & Associates: Remus Ene & Gabriela Ivancu
202
27 Slovenia
Jadek & Pensa Law Office: Eva Gostiša
213
28 South Africa
DM Kisch Inc: Nola Bond & Julia Stephens
220
29 Spain
ELZABURU: Fernando Ilardia & Luis Baz
227
30 Switzerland
ThomannFischer: Daniel Plüss
237
31 Taiwan
TIPLO Attorneys-at-Law: J. K. Lin & H. G. Chen
244
32 United Kingdom
Bristows: Paul Walsh & Dominic Murphy
254
33 USA
Nixon Peabody LLP: Kristen Mollnow Walsh & Gina M. McCreadie
263
34 Vietnam
Pham & Associates: Pham Vu Khanh Toan
271
Stategic Partners
Further copies of this book and others in the series can be ordered from the publisher. Please call +44 20 7367 0720
Disclaimer
This publication is for general information purposes only. It does not purport to provide comprehensive full legal or other advice.
Global Legal Group Ltd. and the contributors accept no responsibility for losses that may arise from reliance upon information contained in this publication.
This publication is intended to give an indication of legal issues upon which you may need advice. Full legal advice should be taken from a qualified
professional when dealing with specific situations.
www.ICLG.co.uk
Chapter 1
The Significance of Actual
Trademark Use and “Use
in Commerce” Under U.S.
Trademark Law
Kristen Mollnow Walsh
Nixon Peabody LLP
Actual use of a trademark is central to both the establishment of,
and ownership of, trademark rights in the United States both at
common law and for registration purposes under the Trademark Act
of 1946, known as the Lanham Act, codified at 15 U.S.C. §1051 et
seq. In most cases, “use in commerce” is a requirement for
obtaining and maintaining federal trademark registration in the
United States. U.S. trademark law in these areas differs in key
respects from trademark law in many other jurisdictions,
particularly civil law jurisdictions with “first to file” systems. As
such, foreign trademark owners and their counsel must be mindful
of the role of actual trademark use in the United States, as discussed
below, in formulating a trademark protection strategy for the United
States.
Jeffrey L. Costellia
in the ordinary course of trade in the marketplace. Typically, such
use is shown through actual sales of the branded goods or use of the
mark in connection with the actual provision of the branded
services.
The following types of activities are generally not sufficient to
create trademark rights:
So-called “token” or “de minimis” use designed merely to
reserve rights in the mark, such as nominal sales of the
branded goods to relatives, personal friends, or related
companies, will not support trademark rights because such
transactions are not the result of arm’s length transactions in
the marketplace.
Intra-company sales or deliveries of the branded goods and
other secretive or non-public transactions (such as shipping
samples or prototypes for evaluation or shipping goods from
one company to another during the manufacturing process)
will not support trademark rights because, in such situations,
the branded goods are not exposed to the public.
I. Establishment and Priority of Trademark
Rights at Common Law
In the United States, actual use of a designation in the marketplace
as an indicator of a source of particular goods and services informs
both the establishment of trademark rights and ownership of such
rights.
A.
Use of a designation in preparing to do business is typically
insufficient to create trademark rights. See Aycock Eng’g,
Inc. v. Airflite, Inc., 560 F.3d 1350, 1360 (Fed. Cir. 2009).
This category would include the following types of activities:
using a designation in a business plan, financial statement, or
prospectus for a stock offering; using a designation in a
concept for an advertising campaign or in an advertising
copy (not disseminated); using a designation in designs for
business cards or company letterhead; using a designation in
new business announcements, pre-sale product
presentations, and pre-sale promotion and/or advertising;
using a designation in communications with builders,
prospective suppliers, or governmental officials prior to
opening a commercial establishment; reserving a domain
name; and incorporating under a particular name.
Establishment of Trademark Rights
Trademark rights arise from actual use of a trademark in connection
with the offering of goods or services to the public. Trademark
rights are not created by invention or by mere adoption: neither the
first person to conceive of the idea of using a particular designation
as a mark, nor a person who decides to use a particular designation
as a mark in the future, acquires any trademark rights. Rather, to
acquire trademark rights, the owner must actually use the
designation in the marketplace to identify the source of its goods or
services, and to distinguish them from those offered by others. As
stated by the United States Supreme Court in 1879:
The ordinary trademark has no necessary relation to
invention or discovery. The trademark recognized by the
common law is generally the growth of a considerable period
of use, rather than a sudden invention . . . . The trademark
may be and, generally, is, the adoption of something already
in existence as the distinctive symbol of the party using it. At
common law the exclusive right to it grows out of the use of
it, and not its mere adoption . . . . It requires no fancy or
imagination, no genius, no laborious thought. It is simply
founded on priority of appropriation.
Trade-mark Cases, 100 U.S. 82, 94 (1879).
A “use” sufficient to support trademark rights must be a bona fide
use in connection with the actual offering of the goods or services
B.
Trademark Ownership and Priority of Use
With regard to ownership, the general rule in the United States is
that trademark ownership is determined by priority of use in the
United States. Ownership rights flow only from prior use, either
actual or constructive.
To establish ownership of a mark, the prior use must be continuous.
See, e.g., Tally-Ho, Inc. v. Coast Cmty Coll. Dist., 889 F.2d 1018,
1022-23 (11th Cir. 1989) (“actual and continuous use is required to
acquire and retain a protectable interest in a mark”); La Societe
Anonyme des Parfums Le Galion v. Jean Patou, Inc., 495 F.2d 1265,
1272 (2d Cir. 1974) (“the proponent of the trademark must
demonstrate that his use of the mark has been deliberate and
continuous”). More than sporadic, or de minimis, sales are
required. Similarly, an initial use, followed by a long period of non-
ICLG TO: TRADE MARKS 2012
© Published and reproduced with kind permission by Global Legal Group Ltd, London
WWW.ICLG.CO.UK
1
Nixon Peabody LLP
Trademark Use & “Use in Commerce” Under U.S. Trademark Law
use, would likely constitute an abandonment and, as such, would
not be a sufficient basis to establish priority. In some cases, modest
levels of pre-sale advertising or promotion, a small volume of sales,
or even a single use in trade, may sustain a claim of priority if
followed by continued commercial use of the mark by the brand
owner. For inherently distinctive marks, ownership (and priority)
accrues to the first to use the designation as a mark. For noninherently distinctive marks where proof of secondary meaning is
required, ownership generally accrues to the first to acquire
secondary meaning. See, e.g., Bass Pro Trademarks, L.L.C. v.
Sportsmans Warehouse, Inc., 89 U.S.P.Q.2d 1844 (TTAB 2008). As
explained in the following sections below, “use” requirements for
priority are not necessarily congruent with “use” requirements for
registration.
The “use” necessary to establish priority must occur in the United
States. Prior use in a foreign nation does not establish priority of
use in the United States (except, perhaps, for foreign marks that are
“well-known” or “famous” in the U.S. pursuant to the well-known
marks doctrine of the Paris Convention Article 6bis). Similarly, to
avoid abandonment of a mark, use must be in the United States, not
abroad. In most circumstances, the foreign activities of a party are
not relevant in a priority dispute concerning U.S. trademark rights.
C.
Scope of Common Law Trademark Rights
Common law trademark rights (i.e., rights based on use rather than
a federal registration) are limited to the geographic area or market
in which the trademark owner is actually using the mark, that is, the
territory where it is selling or distributing the goods, or the territory
where it is providing the services. Common law rights are thus
geographically restricted—which is one of the most compelling
reasons to secure a federal registration where possible.
II. “Use in Commerce” Under the Lanham Act
A.
“Commerce” and “Use in Commerce” Defined
The Lanham Act requires not only a use in trade, but also a use in
commerce. To qualify for registration under the Act, a mark must
be “used in commerce”, where “commerce” is defined as “all
commerce which may lawfully be regulated by Congress”. 15
U.S.C. §§ 1051(a)(1), 1127. Such commerce includes interstate
commerce within the United States, and commerce between the
U.S. and a foreign country. Purely intrastate commerce lies outside
the purview of Congress and, as a result, use of a mark in
connection with purely intrastate commerce does not constitute a
“use in commerce” for purposes of the statute. Similarly, use of a
mark exclusively outside the U.S. does constitute a “use in
commerce”. Foreign use will not establish trademark rights in the
U.S., either at common law or for purposes of the Lanham Act.
Lastly, use of a mark in advertising in the United States for goods
or services that are provided outside of the U.S. is generally not
considered a “use in commerce”. See Buti v. Impressa Perosa,
S.R.L., 139 F.3d 98 (2d Cir.), cert. denied, 525 U.S. 826 (1998) (no
Lanham Act priority was established where the service mark was
for restaurant services offered exclusively in Italy, even though the
restaurant operator had distributed marketing material within the
U.S.); Mother’s Rests., Inc. v. Mother’s Other Kitchen, Inc., 218
U.S.P.Q. 1046 (TTAB 1983) (broadcast of advertisements for a
restaurant located in Canada, and distribution of promotional
materials in southern Ontario tourist routes into the U.S., did not
constitute “use in commerce”).
2
Under the Lanham Act, a “use in commerce” is defined as a “bona
fide use of a mark in the ordinary course of trade, and not made
merely to reserve a right in a mark”. 15 U.S.C. § 1127. For goods
sold or transported in commerce, a mark is deemed to be used in
commerce when the mark is placed on the goods, their containers,
or associated displays (such as trade show booths, mail order
catalogues, or Internet website catalogues through which the
branded goods can be ordered), or on tags or labels affixed thereto,
or, if the nature of the goods makes such placement impracticable,
on associated documents, such as shipping documents. Id. Use of
a mark in advertising for goods, standing alone, does not constitute
a “use in commerce” for purposes of the statute. For services, a
mark is deemed to be used in commerce when the mark “is used or
displayed in the sale or advertising of services and the services are
rendered in commerce, or the services are rendered in more than
one State, or in the United States and a foreign country, and the
person rendering the services is engaged in commerce in connection
with the services”. Id. As stated above, token uses, non-public
uses, and business preparation activities do not typically satisfy the
“use in commerce” requirement for purposes of the Lanham Act.
B.
“Use in Commerce” Requirements Applicable to
Federal Trademark Filings
There are four filing bases in the Lanham Act upon which a foreign
national may apply to obtain a trademark registration in the United
States: (1) actual use of the mark in commerce under Section 1(a);
(2) a bona fide intent to use the mark in commerce under Section
1(b); (3) ownership of a foreign registration under Section 44(e);
and (4) through an extension of protection to the United States of an
International Registration under the Madrid Protocol pursuant to
Section 66(a). As discussed below, “use in commerce” is a
requirement of (1) and (2), but not of (3) or (4).
1.
Filing Bases Requiring Proof of “Use in Commerce”
If the application is based on Section 1(a) of the Lanham Act, the
applicant must be actually using the applied-for mark in commerce
on or in connection with each of the goods and services listed in the
application. 15 U.S.C. §1051(a). As part of the application, the
applicant must provide the date of its first use of the mark, the date
of its first use of the mark in commerce, and a specimen showing
the mark as used in commerce. If the applicant is not, in fact,
actually using the applied-for mark on each of the listed goods
and/or services, the application and resulting registration could be
vulnerable to challenge on the grounds of fraud or non-use. To cure
such a problem, the applicant could delete from the application
those goods and/or services on which it is not using the mark, or
amend the filing basis of the application from Section 1(a) (actual
use) to Section 1(b) (intent to use). See Grand Canyon West Ranch,
LLC v. Hualapai Tribe, 78 U.S.P.Q.2d 1696 (TTAB 2006).
If the application is based on Section 1(b) of the Lanham Act, the
applicant must assert that it has a bona fide intention to use the
applied-for mark in commerce on, or in connection with, each of the
goods and services listed in the application, but is not required to
submit first use dates and proof of use at the time of filing. 15
U.S.C. §1051(b). The applicant will, however, need to provide such
proof prior to registration through either an Amendment to Allege
Use or a Statement of Use.
The bona fides of the stated intention may be the subject of a later
challenge to the validity of the resulting registration on the grounds
of fraud or non-use. The Lanham Act does not define the term
“bona fide intention to use”. However, legislative history indicates
that the term “bona fide intention to use” is meant to eliminate
“token” uses, to preclude those who would file a large number of
WWW.ICLG.CO.UK
© Published and reproduced with kind permission by Global Legal Group Ltd, London
ICLG TO: TRADE MARKS 2012
Nixon Peabody LLP
Trademark Use & “Use in Commerce” Under U.S. Trademark Law
applications without a serious or real intention ever to use them, and
to require a good faith intention on the part of the applicant, based
on an objective view of the circumstances, to eventually use the
mark in a real and legitimate commercial sense. See generally, 3
McCarthy J. Thomas, McCarthy on Trademarks and Unfair
Competition, § 19:14. Otherwise stated, the intent to use a mark
must be genuine. Objective evidence supporting such an intention
will usually consist of an applicant’s documentation, such as a
written business plan or research and development documents,
created at the time of the filing of the application, of realistic plans
to go forward with use of the mark. See Boston Red Sox Baseball
Club Ltd. P’ship v. Sherman, 88 U.S.P.Q.2d 1581, 1587 (TTAB
2008) (evidence of intent to use must relate to time of filing of
application). A “bona fide intention to use” can be definite, but
contingent upon the happening of some event. For example, a
trademark applicant could file several ‘intent to use’ applications,
but then proceed with only one after conducting market testing or
consumer reaction studies.
Proof of “use in commerce” is required to maintain a federal
trademark registration for the full ten-year initial term of
registration, and to renew a federal trademark registration for
subsequent ten-year renewal terms. 15 U.S.C. § 1068. Under
Section 8 of the Lanham Act, a trademark owner is required to file
a use declaration during the fifth year of registration, and then in
every tenth year after registration, asserting that it is using the
registered mark in commerce on, or in connection with, each of the
goods and/or services listed in the registration. A good faith use in
the ordinary course of trade, not merely to reserve a right in the
mark, is required. 15 U.S.C. § 1127. If, at the time a Section 8
declaration is due, the registrant is not actually using the registered
mark on or in connection with all of the listed goods or services, the
registrant should, as part of the required filing, delete from the
registration those goods and/or services on, or in connection with,
which use is not being made. Otherwise, the registration will be
vulnerable to attack as to those goods and/or services.
2.
Filing Bases Not Requiring Proof of “Use in Commerce”
Under Section 44(e), a qualified foreign applicant who owns a
trademark registration in its country of origin may obtain
registration in the United States without having to satisfy the “use
in commerce” requirement applicable under Sections 1(a) and 1(b).
To seek the special statutory benefits of Section 44, the applicant
must be a foreign entity whose country of origin is a party to any
trademark convention or treaty to which the United States is a party
(e.g., the Paris Convention), or that extends reciprocal rights to
United States citizens. In the application, the Section 44(e)
applicant must identify the registration date, registration number,
and country of the foreign registration; provide a copy of the
foreign registration; and verify that it has a bona fide intention to
use the applied-for mark “in commerce”. Significantly, the
applicant is not required to show “use in commerce” prior to
obtaining registration. As stated by the Trademark Trial and Appeal
Board of the U.S. Patent and Trademark Office (“USPTO”), “as a
result of treaty provisions and Section 44, foreign applicants are
given substantial advantages over U.S. citizens, most particularly
the right to obtain U.S. registrations for goods and services for
which they have not yet used the marks in commerce”. In re Societe
d’Exploitation de la Marque Le Fouquet’s, 67 U.S.P.Q.2d 1784
(TTAB 2003). This can indeed be a distinct advantage.
As with applicants under Section 44(e), the owner of an
International Registration who seeks registration in the United
States through a request for extension of protection under the
Madrid Protocol (an “in-bound Madrid application”) under Section
66(a) is not required to show use of the applied-for mark “in
commerce”. Such an application must, however, include a
verification by the applicant that it has a bona fide intention to use
the applied-for mark “in commerce”.
Following registration, the foreign trademark owner must start
using the registered mark in commerce within a reasonable time, or
the protection provided by a Section 44(e) or Section 66(a)
registration will be subject to cancellation on the grounds of
abandonment. Under the Lanham Act, non-use of a mark for three
consecutive years is prima facie evidence of abandonment. 15
U.S.C. § 1127. In addition, foreign trademark owners of
registrations based on Section 44(e) or Section 66(a), like all
registrants, must comply with the “use in commerce” requirements
discussed in Section II.B.1 above to maintain and renew their U.S.
registrations.
See 15 U.S.C. § 1058 (for Section 44(e)
registrations), id. at § 1141k (for Section 66(a) registrations). As
stated above, if, at the time a post-registration declaration of use is
due, the foreign trademark owner is not using the registered mark in
commerce in the United States on, or in connection with, all of the
listed goods or services, it should, as part of the required filing,
delete from the registration those goods and/or services on, or in
connection with, which use is not being made. Otherwise the
registration will be vulnerable to attack as to those goods and/or
services. See supra, Section II.B.1.
C.
Constructive Use
Federal registration of a mark constitutes constructive use of the
mark throughout the United States, and gives the registrant priority
against later adopters of confusingly similar marks, even in
geographic areas where the registrant has not actually used the
mark. 15 U.S.C. § 1057(b). This is one of the principal benefits
that flows from federal registration.
Since 1989, under Section 7(c) of the Lanham Act, the filing date of
a federal trademark application constitutes a constructive use,
conferring a right of nationwide priority, contingent upon final
registration. 15 U.S.C. §1057(c). For the owner of an intent to use
application under Section 1(b), this is a boon because, when the
registration is ultimately issued, such owner obtains a priority date
for nationwide constructive use that corresponds to the filing date
of the intent to use application, which is usually earlier than the first
actual use of the mark in commerce. The statutorily created concept
of constructive use is subject to several important exceptions—it
does not apply against: (1) a prior common law user; (2) an owner
of an application that is pending or has resulted in registration that
was filed prior to the applicant’s filing date; or (3) a foreign owner
of an application that is pending or has resulted in registration that
includes a convention priority date under Section 44(d) that
precedes the applicant’s filing date, provided, in each case, that
abandonment has not occurred. 15 U.S.C. § 1057(c). Thus, under
Section 7(c), the rights of prior nonregistered common law
trademark owners are preserved, and not wiped out by the issuance
of the federal registration. Constructive use can always be defeated
by another’s evidence of a prior actual use.
In the case of registrations resulting from applications containing a
proper convention priority claim under Section 44(d), constructive
use in the United States is triggered as of the filing date of the
foreign trademark owner’s qualifying foreign application, that is,
the convention priority date. 15 U.S.C. §1126(d).
In the case of registrations resulting from in-bound Madrid
applications under Section 66(a), constructive use in the U.S. is
triggered, in most cases, as of the international registration date, or
the convention priority date of the international registration, if any.
15 U.S.C. § 1141f(b).
ICLG TO: TRADE MARKS 2012
© Published and reproduced with kind permission by Global Legal Group Ltd, London
WWW.ICLG.CO.UK
3
Nixon Peabody LLP
Trademark Use & “Use in Commerce” Under U.S. Trademark Law
III. Priority Disputes
It is in the context of this general overview of United States
trademark law relating to trademark use set out above in Sections I
and II that competing common law trademark rights and/or
constructive use priority rights must be construed. The general rule
in the United States is that, as between competing users in the same
geographic market, the exclusive right to use the mark belongs to
the first to establish trademark rights in that market, whether that
use is actual or constructive.
Starting with common law, where there are two common law users
of the same mark in remote geographic areas, each may accrue
exclusive rights, or priority, in its respective area. When the
geographic areas are the same or overlap, the first to establish
trademark rights (that is, the senior user) has exclusive rights in that
market. See Hanover Star Milling co. v. Metcalf, 240 U.S. 403
(1916). In determining priority as between two common law users,
courts consider evidence of the following: actual use of the mark
(including advertising, sales volume, revenue, pattern of sales, and
number of customers), business presence and reputation of each
user (including consideration of whether the business attracts
customers from different locations, the nature and extent of
advertising, the geographic distribution of advertising, and the
geographic origins of sales orders and customer inquiries), the
intent (as in, good faith or bad faith) of each user, and, in some
cases, a “zone of expansion” encompassing geographic areas into
which use is likely to expand. See generally Natural Footwear Ltd.
v. Hart, Schaffner & Marx, 760 F.2d 1383 (3d Cir.), cert. denied,
474 U.S. 920 (1985); Sweetarts v. Sunline, Inc., 380 F.2d 923, 929
(8th Cir. 1967), subsequent opinion, 436 F.2d 705 (8th Cir. 1971).
In a priority dispute between a senior common law user and a
second-in-time owner of a federal registration, the senior common
law user will prevail, but only in the geographic area where it is
using its mark. In a priority dispute between the owner of a pending
intent to use application filed under Section 1(b) and a common law
user who, after the filing date of the intent to use application, was
the first to actually use the mark, the applicant will not be able to
enjoin the conduct of the common law user unless and until its
application matures into a registration. The intent to use applicant
has no right of exclusion, and cannot rely on constructive use under
Section 7(c), prior to registration.
Priority disputes involving United States registrations issued to
foreign trademark owners under Section 44 or Section 66(a),
without actual use of the mark in the U.S., can be complicated.
Consider, for example, where the senior user is a foreign trademark
owner asserting constructive use resulting from a Section 44(e)
registration and the junior user is a common law user. If the foreign
trademark owner has not actually used its mark in commerce in the
4
United States, there will not be any likelihood of confusion in the
United States to trigger a finding of infringement. Thus, while the
foreign trademark owner might technically have priority, he will not
be able to make offensive use of the Section 44(e) registration
unless or until he uses the mark in the junior common law user’s
market in the United States. Defensively, however, a Section 44(e)
registration can be used by the USPTO as a basis to refuse
registration of a later-filed third-party application for a confusingly
similar mark on the grounds of likelihood of confusion.
Use or registration of a confusingly similar mark can also be
stymied by proof of “use analogous to trademark use”. For
example, under Section 2(d) of the Lanham Act, a mark cannot be
registered if it is confusingly similar to either a previously
registered mark or to “a mark or trade name previously used in the
United States by another and not abandoned . . . .”. 15 U.S.C.
§1052(d). Some form of pre-sales activity can constitute “trade
name” use, referred to as “use analogous to trademark use”, to
establish priority so as to prevent registration of a mark to another.
See West Florida Seafood, Inc. v. Jet Rests., Inc., 31 F.3d 1122, 1128
(Fed. Cir. 1994) (“Nothing more than trade name use is required to
bar registration of a mark.”). As stated by the USPTO’s Trademark
Trial and Appeal Board, “[u]se analogous to trademark use . . . is
non-technical use of a trademark in connection with the promotion
or sale of product under circumstances which do not provide a basis
for an application to register, usually because the statutory
requirement for use on or in connection with the sale of goods in
commerce has not been met. Although never considered an
appropriate basis for an application to register, such use has
consistently been held sufficient to establish priority rights as
against subsequent users of the same or similar marks”. Shalom
Children’s Wear Inc. v. In-Wear A/S, 26 U.S.P.Q.2d 1516, 1519
(TTAB 1993).
For pre-sales activities to constitute “use analogous to trademark
use” sufficient to create proprietary rights, such activities must have
been directed at potential purchasers, such that an association was
created in the minds of the purchasing public between the mark and
the petitioner’s goods. See Herbko Intern., Inc. v. Kappa Books,
Inc., 308 F.3d 1156, 1162 (Fed. Cir. 2002). So-called “analogous
use” priority has been applied in priority disputes by the TTAB and
by some federal courts.
IV. Conclusion
As shown above, understanding the roles of actual use and “use in
commerce” in U.S. trademark law is crucial in creating and
implementing effective trademark protection and enforcement
strategies within the United States.
WWW.ICLG.CO.UK
© Published and reproduced with kind permission by Global Legal Group Ltd, London
ICLG TO: TRADE MARKS 2012
Nixon Peabody LLP
Trademark Use & “Use in Commerce” Under U.S. Trademark Law
Kristen Mollnow Walsh
Jeffrey L. Costellia
Nixon Peabody LLP
1300 Clinton Square
Rochester, New York 14604
USA
Nixon Peabody LLP
Suite 900, 401 9th Street, N.W.
Washington, D.C. 20004
USA
Tel:
Fax:
Email:
URL:
Tel:
Fax:
Email:
URL:
+1 585 263 1065
+1 866 947 1121
kwalsh@nixonpeabody.com
www.nixonpeabody.com
Kristen Mollnow Walsh practices in the field of intellectual
property law, with a focus on trademark and copyright-related
matters. As counsel in the firm’s Brands & Creations group,
Kristen has extensive experience in assisting clients with
creating, protecting, and managing their brands. Kristen’s work
for clients includes: comprehensive brand management advice
concerning the adoption of new trademarks; creation and
implementation of filing strategies to protect marks both within the
U.S. and abroad; creative strategies for protecting non-traditional
marks; portfolio management; counseling and implementation of
enforcement strategies; handling of complex intellectual property
due diligence projects; and copyright counseling, registration, and
enforcement. Kristen has particular experience with domain
name enforcement proceedings under the Uniform Domain Name
Dispute Resolution Policy. She is also engaged in trademark,
copyright, unfair competition, and false advertising matters before
various federal courts and the United States Patent and
Trademark Office.
+1 202 585 8207
+1 866 947 0904
jcostellia@nixonpeabody.com
www.nixonpeabody.com
Jeff Costellia works with U.S. and international companies to
develop effective, global intellectual property protection
strategies, involving all phases of patent and trademark
prosecution and enforcement protection. Jeff has extensive
experience in all aspects of patent prosecution before the U.S.
Patent and Trademark Office and has worked closely with hightech companies to protect their developments in electronic
circuits, semiconductors, LCD and electroluminescent displays,
chemical composites and polymers, locomotive and other
transportation monitoring and sensing technologies, large scale
product conveying equipment, mining technologies, microwave
food packaging technologies, and consumer products. His indepth trademark experience includes trademark selection,
registrability, and infringement counseling, particularly those
involved with software, cosmetics, transportation monitoring and
sensing technologies, product conveying equipment, sporting
goods, and consumer products and services. Jeff also has
considerable experience in trademark litigation in the United
States federal courts, and trademark cancellation and opposition
before the Trademark Trial and Appeal Board.
Nixon Peabody LLP helps clients navigate complex challenges in litigation, real estate, corporate law, and finance. With
approximately 700 attorneys throughout the U.S., Europe, and Asia, their focus is on working collaboratively to serve clients
ranging from large corporations and financial institutions to entrepreneurs and private individuals. Employing innovative and clientcentred approaches, the firm helps to anticipate and capture opportunities, prepare for and manage risks, protect intellectual
property, and forecast and overcome obstacles. Nixon Peabody is committed to the clients it serves, the communities in which it
serves them, and the diverse professionals who have helped make it a “Best Law Firm” and a “Best Place to Work”.
ICLG TO: TRADE MARKS 2012
© Published and reproduced with kind permission by Global Legal Group Ltd, London
WWW.ICLG.CO.UK
5
Other titles in the ICLG series include:
Business Crime
Cartels & Leniency
Class & Group Actions
Commodities and Trade Law
Competition Litigation
Corporate Governance
Corporate Recovery & Insolvency
Corporate Tax
Dominance
Employment & Labour Law
Enforcement of Competition Law
Environment & Climate Change Law
Gas Regulation
Insurance & Reinsurance
International Arbitration
Litigation & Dispute Resolution
Merger Control
Mergers & Acquisitions
Patents
PFI / PPP Projects
Pharmaceutical Advertising
Private Client
Product Liability
Project Finance
Public Procurement
Real Estate
Securitisation
Telecommunication Laws and Regulations
59 Tanner Street, London SE1 3PL, United Kingdom
Tel: +44 20 7367 0720 / Fax: +44 20 7407 5255
Email: sales@glgroup.co.uk
www.iclg.co.uk