Use in Commerce

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					Lanham Act Section 45 (Section 1127):
The term “use in commerce” means the bona fide use of a mark in
the ordinary course of trade, and not made merely to reserve a right
in a mark. For purposes of this chapter, a mark shall be deemed to be
in use in commerce—
(1) on goods when— (A) it is placed in any manner on the goods or
their containers or the displays associated therewith or on the tags or
labels affixed thereto, or if the nature of the goods makes such
placement impracticable, then on documents associated with the
goods or their sale, and
(B) the goods are sold or transported in commerce, and
(2) on services when it is used or displayed in the sale or advertising
of services and the services are rendered in commerce, or the
services are rendered in more than one State or in the United States
and a foreign country and the person rendering the services is
engaged in commerce in connection with the services.
How could the applicant (Aycock Engineering) have
             avoided this problem?
      Planetary Motion, Inc. v. Techsplosion, Inc.,
             261 F.3d 1188 (11th Cir. 2001)


12/31/1994   Early 1995                        7/1999
  Darrah        SuSe                           Darrah
  releases   distributes                      transfers
 CoolMail     CoolMail                     rights to PMI


                              4/1998                          ?/1999
                           Techsplosion                    Techsplosion
                             activated                         sues
                           domain name
                             & email
                            solicitation
Brookfield Comm’ns, Inc. v. West Coast Entertainment
         Corp., 174 F.3d 1036 (9th Cir. 1999)


                           WEST COAST (deft)

    1986                 2/1996          Mid 1996               11/1998
 The Movie             Registered           Used              Press release
Buff ’s Movie         domain name     moviebuff.com in        announcing
   Store              moviebuff.com        emails            moviebuff.com

            1993                                      8/1997
      MovieBuff used for                       Files application for
          software                             MovieBuff for online
                                                     database
                           BROOKFIELD (pltf)
Brookfield Comm’ns, Inc. v. West Coast Entertainment
         Corp., 174 F.3d 1036 (9th Cir. 1999)
                    West Coast’s First Priority Argument
                           WEST COAST (deft)

    1986                 2/1996          Mid 1996                11/1998
 The Movie             Registered           Used               Press release
Buff ’s Movie         domain name     moviebuff.com in         announcing
   Store              moviebuff.com        emails             moviebuff.com

            1993                                       8/1997
      MovieBuff used for                        Files application for
          software                              MovieBuff for online
                                                      database
                           BROOKFIELD (pltf)
Brookfield Comm’ns, Inc. v. West Coast Entertainment
         Corp., 174 F.3d 1036 (9th Cir. 1999)
                   West Coast’s Second Priority Argument
                           WEST COAST (deft)

    1986                 2/1996          Mid 1996               11/1998
 The Movie             Registered           Used              Press release
Buff ’s Movie         domain name     moviebuff.com in        announcing
   Store              moviebuff.com        emails            moviebuff.com

            1993                                      8/1997
      MovieBuff used for                       Files application for
          software                             MovieBuff for online
                                                     database
                           BROOKFIELD (pltf)
          mlife?
(analogous use? + tacking?)
15 U.S.C. § 1057 (Section 7)
(c) Application to register mark considered constructive use
Contingent on the registration of a mark on the principal register provided
by this chapter, the filing of the application to register such mark shall
constitute constructive use of the mark, conferring a right of priority,
nationwide in effect, on or in connection with the goods or services
specified in the registration 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;
(2) has filed an application to register the mark which is pending or has
resulted in registration of the mark; or
(3) has filed a foreign application to register the mark on the basis of which
he or she has acquired a right of priority, and timely files an application
under section 1126 (d) of this title to register the mark which is pending or
has resulted in registration of the mark.
Warnervision Entertainment Inc. v. Empire of Carolina,
              101 F.3d 259 (2d Cir. 1996)

 • TLV files ITU application for “Real Wheels” (9/23/94).
 • Warnervision files a use-based application on 1/3/95 and registers
 its mark.
 • Buddy L files a use-based application on 1/6/95
 • Buddy L sells its assets to Empire.
 • Empire buys TLV’s rights to the ITU application, plus the Real
 Wheels product line and goodwill.
 • Empire begins actual use after Warnervision.
 • Warnervision sues Empire and obtains a preliminary injunction.

 Who is the senior user?
Lanham Act Section 44 (Section 1126):
(e) Registration on principal or supplemental register; copy
of foreign registration A mark duly registered in the
country of origin of the foreign applicant may be
registered on the principal register if eligible, otherwise on
the supplemental register in this chapter provided. Such
applicant shall submit, within such time period as may be
prescribed by the Director, a true copy, a photocopy, a
certification, or a certified copy of the registration in the country
of origin of the applicant. The application must state the
applicant’s bona fide intention to use the mark in commerce, but
use in commerce shall not be required prior to registration.
Paris Convention for the Protection of Industrial Property, Article 6quinquies
A.
(1) Every trademark duly registered in the country of origin shall be accepted for filing and protected as
is in the other countries of the Union, subject to the reservations indicated in this Article. Such
countries may, before proceeding to final registration, require the production of a certificate of
registration in the country of origin, issued by the competent authority. No authentication shall be
required for this certificate.
(2) Shall be considered the country of origin the country of the Union where the applicant has a real
and effective industrial or commercial establishment, or, if he has no such establishment within the
Union, the country of the Union where he has his domicile, or, if he has no domicile within the Union
but is a national of a country of the Union, the country of which he is a national.
B.
Trademarks covered by this Article may be neither denied registration nor invalidated except in the
following cases:
(i) when they are of such a nature as to infringe rights acquired by third parties in the country where
protection is claimed;
(ii) when they are devoid of any distinctive character, or consist exclusively of signs or indications
which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, place of
origin, of the goods, or the time of production, or have become customary in the current language or in
the bona fide and established practices of the trade of the country where protection is claimed;
(iii) when they are contrary to morality or public order and, in particular, of such a nature as to deceive
the public. It is understood that a mark may not be considered contrary to public order for the sole
reason that it does not conform to a provision of the legislation on marks, except if such provision itself
relates to public order.
Lanham Act Section 44 (Section 1126):
(d) Right of priority An application for registration of a mark under section 1051 [1],
1053 [3], 1054 [4], or 1091 [23] of this title or under subsection (e) of this section, filed by
a person described in subsection (b) of this section who has previously duly filed an
application for registration of the same mark in one of the countries described in
subsection (b) of this section shall be accorded the same force and effect as would be
accorded to the same application if filed in the United States on the same date on which
the application was first filed in such foreign country: Provided, That—
(1) the application in the United States is filed within six months from the date on which
the application was first filed in the foreign country;
(2) the application conforms as nearly as practicable to the requirements of this chapter,
including a statement that the applicant has a bona fide intention to use the mark in
commerce;
(3) the rights acquired by third parties before the date of the filing of the first application
in the foreign country shall in no way be affected by a registration obtained on an
application filed under this subsection;
(4) nothing in this subsection shall entitle the owner of a registration granted under this
section to sue for acts committed prior to the date on which his mark was registered in this
country unless the registration is based on use in commerce.
Illinois High School Ass'n v. GTE Vantage, Inc.,
            99 F.3d 244 (7th Cir. 1996)
Film: 1999
Public uses: 1999-2002
Swingline produces red stapler: 2002
Emergency One, Inc. v. American Fireeagle, Ltd.,
        228 F.3d 531 (4th Cir. 2000)
Who owns the rights to the mark for the Homestead
    Grays baseball team (disbanded: 1950)?
University Bookstore v. University of Wisconsin
Board of Regents, 33 U.S.P.Q.2d 1385 (T.T.A.B.
                     1994)
The “Motion W”
First use in commerce: 1991;
Federal Registration: 1996
University of Wisconsin Badgers,
NCAA Division I
Madison, WI
Washburn University
Ichabods
NCAA Division II Topeka,
KS
                        Wisconsin Lutheran High
                        School, WI




West Lakota West High
School, OH
Post-settlement (since 2009) at Washburn
Los Doyers
    or




     Is this mark registrable?

				
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