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

2. 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 ….

3. 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)

4. 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

5. “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.

6. Larry Harmon v. Williams

7. Maryland Stadium v. Becker 1987 1988 1989 1990 1991 1992 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

8. Blue Bell v. Farah May Jun. Jul. Aug. Sep. Oct. May 16 - Decides on TIME OUT Jun. 27 - Tags completed Jul. 3 - One pair sent to 12 managers; orders received; production starts Sep. - First shipments to actual customers Jun. 17 - 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

9. 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

10. 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

11. United Drug v. Rectanus 1870 1880 1890 1900 1910 1877- Regis sells product under REX in MA RectanusUnited 1883 - Uses REX for blood purifier in KY 1898- State TM 1900 - Fed TM 1912 - REX shipped to KY

12. 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.)

13. Thrifty v. Thrift 1960 1965 1970 1958- THRIFTY founded in OK ThriftThrifty 1962 - Incorporates; serving E. Taunton, MA 1967 - Opens outlet in MA 1962 - Expands to KS, TX, MO 1964 - Secures Fed TM Registration 1970 - Begins operation in Nantucket

14. 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 …

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

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

17. Dawn Donut v. Hart’s

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