Trademark and Unfair Comp. Boston College Law School January 30, 2008 Use in Commerce, Priority

Establishing Rights Lanham Act § 45 (15 U.S.C. § 1125) –Trademark. The term “trademark” includes any word, name, symbol, or device, or any combination thereof - (1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register … –to identify and distinguish his or her goods … from those manufactured or sold by others and to indicate the source of the goods ….

P&G v. J&J P&G Marks –Active Use SURE (deodorant) –Maintained SURE (tampons) ASSURE (shampoo & mouthwash) J&J Marks –Active Use ASSURE (tampons) SURE & NATURAL (maxi-shields)

Use requirement Policy justifications –Furthers purpose of trademark (I.D. source) –Prevents warehousing of trademarks –Provides notice to others Possible drawbacks –May cause uncertainty re: when rights attach –May result in loss of preparatory expenses

“Use in Commerce” Lanham Act § 1 (15 U.S.C. § 1051) –(a)(1) The owner of a trademark used in commerce may request registration … Lanham Act § 45 (15 U.S.C. § 1125) –Commerce. The word “commerce” means all commerce which may lawfully be regulated by Congress –Use in Commerce. The term “use in commerce” means the bona fide use of a mark in the ordinary course of trade, and not merely made to reserve a right in a mark.

Larry Harmon v. Williams

Maryland Stadium v. Becker Starts selling T-Shirts New ballpark approved BeckerMSA Old buildings demolished New stadium begins to rise Named Camden Yards First game played Extensive advertising, promotion, and use

Blue Bell v. Farah May Jun. Jul. Aug. Sep. Oct. May 16 - Decides on TIME OUT Jun Tags completed Jul. 3 - One pair sent to 12 managers; orders received; production starts Sep. - First shipments to actual customers Jun Decides on TIME OUT Jul. 5 - Ships Mr. Hicks Jeans Labeled TIME OUT Jun. 5 - Presented to sales force Aug. - Production starts Sep. 4 - Presented to sales force Oct. - Shipments to actual customers FarahBlue Bell

What constitutes “use”? Use in a bona fide way, targeted at customers Key is “use” not “sale” –Sales probative of use, esp. if followed by more –But neither necessary nor sufficient Single sale may not be sufficient (Blue Bell, Lucent) Token sales not sufficient (Blue Bell, P&G) Preparatory activity may be sufficient (Shalom, Becker) –Look to totality of circumstances

Hypothetical Jan. Feb. Mar. Apr. May Learns of Murky’s plans; accelerates Announces NEW GREED magazine to advertisers MarketMurky Sends mailings to other subscribers offering special rates Publishes prototype, mailed as an insert in another magazine First free-standing issue hits the stands Places ad in national newspaper Sends hastily put-together, photo- copied issue to the stands First conventional, 4-color issue hits the stands

United Drug v. Rectanus Regis sells product under REX in MA RectanusUnited Uses REX for blood purifier in KY State TM Fed TM REX shipped to KY

Concurrent Use Two types of concurrent use –Different Products E.g. Apple Records and Apple Computers E.g. Acme Cleaners, Acme Mufflers, Acme... –Different Geographic Markets E.g. Broadway Pizza (Boston) and Broadway Pizza (S.F.)

Thrifty v. Thrift THRIFTY founded in OK ThriftThrifty Incorporates; serving E. Taunton, MA Opens outlet in MA Expands to KS, TX, MO Secures Fed TM Registration Begins operation in Nantucket

Registration - Priority Lanham Act §7(c) (15 U.S.C. 1057(c)): –Contingent on the registration of a mark …, the filing of the application … shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect, in connection with the goods … specified … 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 …

Concurrent Use - No Reg. Broadway Pizza (CA) Broadway Pizza (MA)

Concurrent Use - Fed. Reg. Broadway Pizza (CA) Broadway Pizza (MA)

Dawn Donut v. Hart’s

Administrative Details Next Assignment –IV.A & B – Registration