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 , 1053 , 1054 , or 1091  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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