Trademark Applicants Have Another Reason To File For Federal Protection

There are multiple benefits of filing for federal trademark protection.  In the recent decision of the Trademark Trial and Appeal Board (TTAB), Central Garden & Pet Company v. Doskocil Manufacturing Co., Inc. Opposition No. 91188816 (August 16, 2013) [citable as precedent], one more reason is given to trademark applicants to encourage filing for federal trademark protection. In this decision, the Board clearly states that a trademark applicant is entitled to rely on its trademark application filing date as “constructive use” of its mark in commerce, in a Trademark Trial and Appeal Board proceeding, to establish priority of use. This applies to applicants filing either use applications or intent-to-use applications with the United States Patent and Trademark Office (See 15 U.S.C. §§1057(c) and 1141f(b)).

This is significant for several reasons. The first reason is that the applicant may reserve his or her first use date, at the time the trademark application is filed, even if the applicant has not actually used the trademark in connection with the goods or services in interstate commerce.  This permits an applicant to gain priority for purposes of use of the trademark, while building their business without actual use. The second reason is that it is extremely costly to prove first use in commerce through testimony and business records, and using your filing date as your first use date allows you to avoid that expense. Lastly, the Examining Attorneys at the USPTO cannot start to work on the applicant’s behalf, until the trademark application is filed.  Once filed, the USPTO Examiners will refuse an incoming trademark application, if it will cause a “likelihood of confusion” with the proposed mark in the applicant’s earlier filed trademark application.

We frequently counsel our clients to file a trademark application as soon as reasonably practicable subsequent to clearing the mark. Applicants should not delay a filing, waiting for a first use date.  This will only expose the applicant to the risk of a third party filing for a similar trademark in a related industry. We encourage our clients to file intent-to-use applications for the very reason that the filing date will act as “constructive use” of the mark in commerce, as long as the application matures to a registration (See TMEP §201.02).

 Once the application registers with the USPTO, the owner of the trademark will have an exclusive legal right to prevent others from using a mark that will cause a likelihood of confusion in the marketplace, with the exception of two scenarios. The first of the two circumstances would be if a prior user had seniority in a specific geographic area, due to using a similar mark in conjunction with a related product or service prior to the date the trademark application was filed with the USPTO.  The second scenario would be if a third party could rely on their filing of a foreign application which would entitle that third party to an earlier priority filing date (See TMEP §206.02 and 15 U.S.C. § 1226(d)).

Regarding, intent-to-use applications, we counsel our clients on one specific area of caution when filing this type of application with the USPTO. The applicant must possess a bona fide intention to use the mark in interstate commerce in connection with the goods and/or services identified in the trademark application. We recommend that the trademark applicant maintain records of their ongoing efforts to use the trademark in commerce. These efforts may include, marketing research, promotional activities, product development or product research, efforts taken to locate distributors, or other types of similar initiatives. If the trademark applicant is challenged and cannot produce documentary evidence to corroborate the verified statement of a bona fide intent to use, this absence of proof will be construed to demonstrate that the trademark applicant lacks a bona fide intention to use the proposed trademark with the goods or services identified in the trademark application (See PRL USA Holdings, Inc. v. Young, Opposition No. 91206846 (October 16, 2013). If you are planning to file an intent-to-use trademark application with the USPTO, please feel free to contact our office with any inquiries.