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Common Law Trademark Rights And Use Analogous To Trademark Use

In the United States trademark common law rights are significant rights that cannot be overlooked. Our trademark system recognizes legal rights from trademark registration and from trademark use in commerce. Common law trademark rights can be used to prove priority in a priority determination and such rights can be the basis to oppose a trademark application or to cancel a trademark registration. In addition, a party in a trademark dispute does not have to demonstrate technical trademark use to prevail in an opposition or cancellation proceeding. Instead, a party can rely on “use analogous to trademark use”. See our Web page entitled, Priority Determinations Based on Common Law Use, where we discuss how common law rights must be pleaded in the Notice of Opposition or the Petition to Cancel.

Technical trademark use is the type of use required to file a federal trademark application with the United States Patent & Trademark Office (“USPTO”). This means for goods the trademark must be placed on a container, the display associated with the product, the tag, label, packaging or associated documents. The goods have to be sold or transported in “commerce” as defined by the Trademark Act.

For services, there must be use in the sale or advertising of the services and the services must be rendered in commerce. Use analogous to trademark use is a looser requirement. Examples of this type of use would include pre-sales activities, use at a trade show, use in promotion or advertising, use in catalogs or brochures, use in trade publications, direct mail use, use directed at prospective purchasers, or trade name use. Use analogous to trademark use has to have an impact on consumers and prospective purchasers to create an association between the mark and the goods and services in the minds of the public. This association must have been created with more than an insubstantial number of potential consumers. The use must be visible to the public and if the public exposure is lacking, the use will not be sufficient even for a priority determination.

Not only can an Opposer or Petitioner rely on use analogous to trademark use, but so can an applicant or registrant. The Board explained this principle in Corporate Document Services Inc. v. I.C.E.D. Mgmt. Inc. 48 USPQ2d 1477, 1479 (TTAB 1998). The Board stated in part that: “an intent-to-use applicant is entitled to rely upon actual use, or use analogous to trademark use, prior to the constructive use date of the intent-to-use application.” The Board further stated that the use could be strictly intrastate use. In addition, trade name use may qualify to prove priority rights. Distinctiveness requirements that apply to trademarks also are applicable to trade name use. Therefore, if the trade name is not registered at the USPTO on the Principal Register, then it must be proven that the trade name is inherently distinctive or has acquired distinctiveness. Moreover, the trade name must be used in a public manner that creates an association between the name and the business or the goods and/or services of the business.

Priority can also be established based on Section 44(d) or Section 44(e) of the Trademark Act. If filed under Section 44(d) the U.S. application must be filed within six months of the filing date of the foreign application. Then, the U.S. applicant can rely on the foreign filing date for priority purposes. However, before a 44(d) application can mature into a registration, the applicant must perfect a basis for registration under Section 1(a), Section 1(b) or Section 44(e). The applicant’s 44(d) filing need not be made in the applicant’s country of origin, but can be filed in any country that is a party to a treaty or agreement with the U.S. that extends reciprocal rights to priority to U.S. nationals. However, if an applicant relies on 44(e) for its basis to file in the U.S. the foreign registration issued must be in its country of origin. In addition, a Section 44(e) application may only rely on the U.S. filing date for priority purposes and not the application date of the foreign filing.

Priority determinations in trademark law may sound simple, but in reality they can be incredibly technical, driven by statute and a case-by-case factual analysis. If you need assistance determining trademark priority rights, please contact our office for a courtesy consultation.