Use in Commerce

1
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.
2
Planetary Motion, Inc. v. Techsplosion, Inc., 261
F.3d 1188 (11th Cir. 2001)
7/1999 Darrah transfers rights to PMI
Early 1995 SuSe distributes CoolMail
12/31/1994 Darrah releases CoolMail
4/1998 Techsplosion activated domain name email
solicitation
?/1999 Techsplosion sues
3
Brookfield Commns, Inc. v. West Coast
Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999)
WEST COAST
1986 The Movie Buffs Movie Store
2/1996 Registered domain name moviebuff.com
Mid 1996 Used moviebuff.com in emails
11/1998 Press release announcing moviebuff.com
1993 MovieBuff used for software
8/1997 Files application for MovieBuff for online
database
BROOKFIELD
4
Brookfield Commns, Inc. v. West Coast
Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999)
West Coasts First Priority Argument
WEST COAST
1986 The Movie Buffs Movie Store
2/1996 Registered domain name moviebuff.com
Mid 1996 Used moviebuff.com in emails
11/1998 Press release announcing moviebuff.com
1993 MovieBuff used for software
8/1997 Files application for MovieBuff for online
database
BROOKFIELD
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Brookfield Commns, Inc. v. West Coast
Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999)
West Coasts Second Priority Argument
WEST COAST
1986 The Movie Buffs Movie Store
2/1996 Registered domain name moviebuff.com
Mid 1996 Used moviebuff.com in emails
11/1998 Press release announcing moviebuff.com
1993 MovieBuff used for software
8/1997 Files application for MovieBuff for online
database
BROOKFIELD
8
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.
9
15 U.S.C. 11126 (Section 44) (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
applicants bona fide intention to use the mark
in commerce, but use in commerce shall not be
required prior to registration.
10
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.
11
15 U.S.C. 11126 (Section 44) (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.
12
Illinois High School Ass'n v. GTE Vantage, Inc.,
99 F.3d 244 (7th Cir. 1996)
13
Emergency One, Inc. v. American Fireeagle, Ltd.,
228 F.3d 531 (4th Cir. 2000)
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16
University Bookstore v. University of Wisconsin
Board of Regents, 33 U.S.P.Q.2d 1385 (T.T.A.B.
1994)
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19
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.
20
(No Transcript)