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.