Trademark Priority + TM Office
Procedures/Incontestability
Intro to IP – Prof Merges
3.16.12 [Originally scheduled
for 3.13 and 3.15.2012]
Agenda
• Priority
– Federally Registered Marks
– Common Law trademarks
Hinsdale 630-325-8126
Naperville 630-355-2230
Wheaton 630-221-8300
Oak Brook 630-928-1510
Zazu Designs, Inc. v. L’Oreal
ZHD
Meets with
Chemists;
sales in salon
11/85; 2/86:
Shipments to
Texas & Florida
ZHD Files Suit
L’Oreal
1985
2/86
4/86
6/12/86
1987
4/86 Covenant
with Riviera; 1st
Interstate
shipment
Federal
Registration
How do you establish priority?
• Common law origins: Must “win the race to
the marketplace” – IPNTA 5th at p. 779
• BUT: There are some detailed rules to this
race . . .
Lanham Act sec. 1, 15 USC 1051
“(a)(1) The owner of a
trademark used in commerce
may request registration of its
trademark on the principal
register hereby established . .
. .”
Caselaw: Balancing two factors
• “Prevent[] entrepreneurs from reserving
brand names in order to [raise rivals’ costs]”
– prevent “Rent Seeking” – IPNTA 5th p.779
• “Allow[] firms to seek protection for a mark
before investing substantial sums in
promotion” – “Claim-staking” – IPNTA 5th p.
779
Sound familiar?
• Utility in patent law: prevent “wrong kind” of
racing, but permit reasonable claiming
• Derivative works in copyright: allow owner to
develop ancillary markets without fear of
competition
Use requirement
• Policy justifications
– Furthers purpose of trademark (I.D. source)
– Prevents warehousing of trademarks
– Provides notice to others
• Possible drawbacks
– May cause uncertainty re: when rights attach
– May result in loss of preparatory expenses
A twist: “Intent to use”
• Allows “reservation” of right to a trademark
• But ONLY if reserved mark is actually used
within 6 months (extendable to 1 yr. and
then three years for good cause)
Intent to use statute: Lanham Act
Sec. 1(b), 15 USC 1051(b)
(b)(1) A person who has a bona fide intention,
under circumstances showing the good faith
of such person, to use a trademark in
commerce may request registration of its
trademark on the principal register hereby
established by paying the prescribed fee and
filing in the Patent and Trademark Office an
application and a verified statement, in such
form as may be prescribed by the Director.
Lan Act Sec 13, 15 USC 1063
(b)(2) a notice of allowance
shall be issued to the
applicant if the applicant
applied for registration under
section 1051(b) of this title. . .
.
“Use in Commerce”
• Lanham Act § 1 (15 U.S.C. § 1051)
– (a)(1) The owner of a trademark used in
commerce may request registration …
• Lanham Act § 45 (15 U.S.C. § 1125)
– Commerce: All commerce which may
lawfully be regulated by Congress
– Bona fide use of a mark in the ordinary
course of trade, and not merely made to
reserve a right in a mark.
Maryland Stadium v. Becker:
IPNTA 5th 786
MSA
New ballpark approved
Extensive advertising,
promotion, and use
Becker
1987
1988
1989
Old buildings demolished
1990
New stadium begins to rise
1991
Named Camden Yards
First game played
1992
Starts selling T-Shirts
What constitutes “use”?
• Use in a bona fide way, targeted at customers
• Key is “use” not “sale”
– Sales probative of use, esp. if followed by more
– But neither necessary nor sufficient
• Single sale may not be sufficient (Blue Bell, Lucent)
• Token sales not sufficient (Blue Bell, P&G)
• Preparatory activity may be sufficient (Shalom,
Becker)
– Look to totality of circumstances
Registration - Priority
• Lanham Act §7(c) (15 U.S.C. 1057(c)):
– Contingent on the registration of a mark …, the
filing of the application … shall constitute
constructive use of the mark, conferring a right
of priority, nationwide in effect, in
connection with the goods … specified … against
any other person except for a person whose
mark has not been abandoned and who, prior to
such filing - (1) has used the mark …
Multiple TM Users – 3 scenarios
• The first to use in commerce registers the
trademark: the “senior user” gains
nationwide rights
• Neither user of the TM seeks federal
registration: both have rights in respective
territories
• Both use TM, then one or both seek federal
registration
Common Law Rights and
Concurrent Use
• Two types of concurrent use
– Different Products
• E.g. Apple Records and Apple Computers
• E.g. Acme Cleaners, Acme Mufflers, Acme ...
•
–Different Geographic Markets
• E.g. Broadway Pizza (Boston) and
Broadway Pizza (S.F.)
Common law rights
• Geographic priority determined by
(1) 1st use in a given geographic
area, (2) customer associations in
that area
• Key: both users can expand
geographic areas unless it causes
confusion
Common law parallel use,
followed by registration
• Can give rise to a concurrent use registration
• BOTH parties entitled to use marks in certain
geographic areas
[I]f the Commissioner determines
[no likelihood of confusion from use in
different geographic areas] concurrent
registrations may be issued to such
persons when they have become
entitled to use such marks as a result of
their concurrent lawful use in commerce
prior to (1) the earliest of the filing
dates of the applications pending or of
any registration issued under this Act.
Lanham Act § 2(d), 15 USC § 1052(d).
• Weiner King, Inc. v. Wiener
King Corp., 615 F.2d 512
(C.C.P.A. 1980)
Limited area defense allows the nonregistering party to claim priority in those
geographic areas where he has made
continuous use of the mark since before
the registering party filed her application.
The non-registering party is ‘‘frozen’’ in
the use of his mark, however, and cannot
expand it outside his existing territory or
a natural ‘‘zone of expansion.’’ See
Weiner King, Inc. v. Wiener King Corp.,
615 F.2d 512 (C.C.P.A. 1980).
Key: Senior party gains
constructive national rights
• One of the greatest benefits of federal
registration
• Constructive national use gained from (1)
“use in commerce” (minimal) plus (2) federal
registration
Dawn Donut v. Hart’s, 267 F2d 358
(2d Cir 1959)
State registration; common law
use
• Zazu’s state registration here: for services,
not goods
– “Trade name” vs. state TM register
• What if Zazu had had a state registration for
goods? Constructive use throughout state?
TM Office procedures
• Registration: Principal vs. Supplemental
Register
• Incontestability: Only for marks on the
Principal Register
• Oppositions, Interferences, Cancellation
Benefits of federal registration
• Constructive national use
• Incontestable after 5 years (eliminates some
important defenses in TM suits)
• Customs enforcement; treble damages +
attorneys fees possible
Grounds for rejecting registration
• Immoral or Scandalous matter
• Changing standards over time
• Problem 5-5: Washington Redskins case
Disparaging Marks
• Sec. 1052 (Lanham Act sec. 2). Trademarks
Registrable on Principal Register; Concurrent
RegistrationSec. 1052 (Lanham Act sec. 2)
• “No mark [capable as serving as a TM] may
be denied registration unless . . .”
Sec. 2(a); 15 USC 1052(a)
(a) Consists of or comprises immoral,
deceptive, or scandalous matter; or
matter which may disparage or
falsely suggest a connection with
persons, living or dead, institutions,
beliefs, or national symbols, or bring
them into contempt, or disrepute;
General Public; General Associations
First Amendment Rights
• Why not strongly implicated?
• Is a TM an aspect of a right to speak freely?
– Protecting the speaker – vs. protecting the
listener’s associations
Current status of Harjo
Professional Football, Inc. v. Harjo, 565 F.3d 880
(D.C. Cir. 2009) (upholding district court
finding of laches – mark in use for over 30
years before challenge brought).
Compare: Harjo v. Pro-Football, Inc., 50
U.S.P.Q.2d 1705 (T.T.A.B. 1999) (original
action: mark ordered to be cancelled from
register)
Sec. 2(e); 15 USC 1052(e)
(e) Consists of a mark which (1) when used on or in
connection with the goods of the applicant is
merely descriptive or deceptively misdescriptive of
them, (2) when used on or in connection with the
goods of the applicant is primarily geographically
descriptive of them, except as indications of
regional origin may be registrable under section
1054 of this title, (3) when used on or in
connection with the goods of the applicant is
primarily geographically deceptively
misdescriptive of them,
“I registered ‘Nantucket’ and all I got was
this lousy t-shirt”
Nantucket holding
• TTAB refusal to register mark – on grounds
that it was primarily geographic
• TMEP: mark is geographic if “goods are
known to emanate from” that location
• A species of “descriptiveness”; also
somewhat like generic marks
Examples
• Wisconsin cheese
• Washington apples
• Milwaukee bratwurst
Geographically deceptively
misdescriptive
• “Cuban” brand cigars – made in New
Hampshire
• “Napa” brand wine – grapes grown in
Stockton
Two related issues
• Primarily geographically descriptive
• Primarily geographically misdescriptive
• Why are both bad (as TM’s)?
Apellations of Origin
Lanham Act §
2(a) – “wines or
spirits” only
Certification marks: eg, Roquefort
Surnames
“Why Can’t I Use Me Own Name?”
Incontestability
• Statute
• Rationale
• Park n’Fly Case
Park n’Fly Sues “Dollar Park n’Fly”
Dollar’s defenses
• Mark is generic; or merely
descriptive; privity with senior user;
no likekihood of confusion
• P. 709
INCONTESTABILITY: Except on a ground for
which application to cancel may be filed at
any time under paragraphs (3) and (5) of
section 1064 of this title, and except to the
extent, if any, to which the use of a mark
registered on the principal register infringes a
valid right acquired under the law of any
State or Territory by use of a mark or trade
name continuing from a date prior to the
date of registration under this chapter of
such registered mark, …. § 15, 15 USC
§1065
[T]he right of the owner to use such registered
mark in commerce for the goods or services
on or in connection with which such
registered mark has been in continuous use
for five consecutive years subsequent to the
date of such registration and is still in use in
commerce, shall be incontestable: Provided,
That—
§15 cont’d
(1) there has been no final decision adverse to the
owner’s claim of ownership … and
(2) there is no proceeding involving said rights
pending in the United States Patent and
Trademark Office or in a court and not finally
disposed of; and
(3) an affidavit is filed with the Director within
one year after the expiration of any such fiveyear period setting forth [that] such mark has
been in continuous use for such five consecutive
years and is still in use in commerce, and
(4) [Not generic] -- § 15
(3) At any time if the registered mark becomes
the generic name … or has been abandoned,
or its registration was obtained fraudulently or
contrary to the provisions of section 1054 of
this title or of subsection (a), (b), or (c) of
section 1052 of this title [immoral, flag
symbol, living individual] for a registration
under this chapter, … or if the registered mark
is being used by, or with the permission of, the
registrant so as to misrepresent the source of
the goods or services on or in connection with
which the mark is used … § 14
(5) [special provisions re:
cancellation of certification
marks]
§ 14, 15 USC § 1064
Incontestability: sec. 33(a), 15 USC
1115
• “Prima facie evidence” of
ownership, validity, use
• § 33(b): Incontestability; Defenses
(b) Incontestability; defenses. To the extent
that the right to use the registered mark has
become incontestable under section 1065 of
this title, the registration shall be conclusive
evidence of the validity of the registered
mark and of the registration of the mark, of
the registrant’s ownership of the mark, and
of the registrant’s exclusive right to use the
registered mark in commerce.
Such conclusive evidence shall relate
to the exclusive right to use the mark
on or in connection with the goods …
specified in the affidavit. Such
conclusive evidence of the right to
use the registered mark shall be
subject to proof of infringement as
defined in section 1114 of this title,
and shall be subject to the following
defenses or defects:
Defenses that Survive
Incontestability
1.
2.
3.
4.
5.
6.
7.
Obtained by Fraud
Abandonment
Used to Misrepresent source or origin
Fair Use (descriptive marks only)
Prior 3rd party rights (e.g., concurrent use)
Prior registered mark
Functional (since 1998 – 1064(3))
§ 33(b) (1) – (9)
Additional Defenses always
available
1. Antitrust, equitable defenses
(laches, etc.)
2. Mark is generic (sec. 14(c), 15
USC 1064 (c))
Sup Ct
The approach adopted by the Court of Appeals
implies that incontestability adds nothing to
the protections against cancellation already
provided in §14. The decision below not
only lacks support in the words of the
statute; it effectively emasculates §33(b)
under the circumstances of this case.
IPNTA 5th at 812
Policy
• The right to challenge marks that become
generic is enough to prevent the harm to
competition that the Court of Appeals (and
the dissent) are worried about.
• IPNTA 5th at 813.
Word Mark PARK 'N FLY Goods and Services IC
039. US 105. G & S: VEHICULAR PARKING
ADJACENT AIRPORTS Serial Number 73153231
Filing Date December 23, 1977 Registration
Number 1111956 Registration Date January
23, 1979 Owner (REGISTRANT) PARK'N FLY,
INC. CORPORATION MISSOURI THE PLAZA
Live/Dead Indicator LIVE
TMEP http://tess2.uspto.gov/tmdb/tmep/
1605.04 Requirements for Affidavit or
Declaration of Incontestability
Section 15 of the Act refers to the affidavit or
declaration merely as “setting forth” the
specified information. See 15 U.S.C.
§1065(3). Therefore, no showing or proof
beyond the owner’s verified statement is
required.
1
null
fromCurre
SPE
73153231
20090123
Specimen
servlet
Offensive vs. Defensive Use of
Incontestability
• Defensive: Like Park n’ Fly: protect against
certain otherwise available defenses
• Offensive: In some circuits, automatic proof
that mark is “strong”
– In others, no . . .