How timely filing relates to trademark protection05.04.18
This is the second of a two-part blog regarding filing for trademark protection with the U.S. Patent and Trademark Office (the “USPTO”).
In the last entry, we discussed how a trademark derives its power (and protectability!) from “use in commerce.” This entry discusses a few of the complications that can arise when more than one party wants to use the same trademark term for similar goods or services in commerce, and in those cases, why it’s important to file for protection as soon as possible.
Let’s consider the example of our business owner who is selling soap under the mark FLUBO, a strong, fanciful, distinctive mark (for more on trademark names and inherent distinctiveness, check out this article).
Although it seems highly unlikely that anyone else could conceive of the term, FLUBO, independently and without knowledge of our exemplary business owner, let’s pretend that … another party, across the country, who never heard of our business owner or her delightful brand of soap has thought of the term FLUBOSH. This second party now desires to sell soap products under the term FLUBOSH.
Scenario 1: In January 2010, our business owner begins using FLUBO in association with the sale of soap products in Florida. She starts out small and sells soap to visitors from her Main Street store. Eventually, after a few successful years, she opens another store in a nearby town. The other business owner, who has never heard of FLUBO, begins selling his soap products under the term FLUBOSH in Oregon in January 2011. His sales are also local for the first couple of years. But, unlike the Florida FLUBO, the Oregon FLUBOSH catches fire, and after a couple years of sales, the FLUBOSH soap finds its way into several major retail stores, and it begins being sold in 40 states across the country.
In this scenario, both parties have established common law trademark rights in their respective marks. Neither party can be said to have adopted its mark in bad faith. Because neither party has filed a federal trademark application (or received a registration) through the USPTO, the determination of priority (i.e., who has first rights to use the mark in a certain territory) will be based on actual use, reputation of the mark, and a projected “zone of natural expansion.”
Essentially, and without delving into the zone of natural expansion analysis, and assuming that neither mark has achieved a reputation beyond their respective geographic uses, the ability of each trademark owner to use its respective trademark will be evaluated on a first in time, first in right basis.
Scenario 2: Same set of facts, outlined above, except that our business owner decides to file a trademark application for FLUBO within the first six (6) months of using her mark in commerce. The second owner, out in Oregon, still does not know of FLUBO, or the trademark registration of FLUBO which has been granted by the USPTO before he adopts and begins using FLUBOSH.
In this case, the owner of FLUBO will be able to assert nationwide priority to the use of FLUBO, or confusingly similar terms, for goods/services related to soap products, which priority will be based on the date of her first use in commerce and on the date she filed her trademark application with the USPTO. When/if she becomes aware of FLUBOSH, the owner of FLUBO will be able to assert that FLUBOSH was not adopted in “good faith,” as she will be able to assert that, on the date of her trademark registration, all others were put on nationwide constructive notice of her rights in the term for the goods. In other words, rather than having to live with another, similar term, the owner of FLUBO will be in a much stronger position, having filed and received a federal trademark registration.
Scenario 3: Same trademarks, same respective owners. This time, however, the owner of FLUBO has taken preparations to begin selling soap under the mark, FLUBO, but she has not yet opened her store. She decides to file a trademark application with the USPTO, but under an intent-to-use basis (for more on in-use v. intent-to-use filings, see our previous post). She files her application on January 1, 2010. Meanwhile, across the country, the owner of FLUBOSH opens his store and makes his first sale on March 30, 2010. Like the two scenarios above, he does not file for federal trademark protection. By May 2010, the owner of FLUBO opens her store and begins selling her soap. The USPTO approves the mark and in July 2010 our business owner amends her filing basis, and files a Statement of Use, along with an appropriate Specimen, demonstrating use. The USPTO grants FLUBO a trademark registration by September 2010.
In this scenario, even though the owner of FLUBO did not begin using her trademark first, she will still be in just as strong a position against the owner of FLUBOSH as she would have been, had she been using her trademark in commerce first. In other words, because she filed a trademark application on the federal register before the owner of FLUBOSH began using his trademark in commerce, the owner of FLUBO will be able to claim priority based on the constructive notice afforded under federal law.
To be clear, this article just scratches the surface of trademark law and priority issues. Nevertheless, it should be clear from this discussion that a trademark application with the USPTO (and a subsequent registration) can place important leverage in the applicant/owner’s hands against potential other users.