You sell widgets. A marketing consultant has tested potential brand names on widget consumers. She's found that, of all the names tested, WID-WAM was, far and away, the most appealing. As a result, you decide to use WID-WAM as the brand for the new widget product you'll be introducing to the market in about 15 months. A quick check of the electronic database at the United States Patent and Trademark Office (PTO) reveals no record of anyone ever having sought a PTO trademark registration for WID-WAM. As a result, you decide (mistakenly) that it's unnecessary to have a professional search done on the mark.[1]
What do you do next? (1) Wait the 15 months or so until you've started actually selling the new widget product using the WID-WAM brand, and then file a "use" application to register WID-WAM at the PTO? (2) Wait a few months, and then file an "intent-to-use" application with the PTO? Or (3) immediately file an "intent-to-use" application with the PTO?
Answer: (3), File immediately. By doing so, you can use a Federal statute[2]to maximize protection of your mark. The protection is, however, subject to a contingency: you must ultimately get the mark registered at the PTO.[3] But assuming that the registration will in fact occur, your filing of the application constitutes a "constructive use" of the mark, entitling you to a "right of priority" that's "nationwide" in effect. This means you trump anyone else in the country who first tries to use or register the same mark for the same or similar goods after you've filed your "intent-to-use" application.[4]
Take the following example. Assume that you file the WID-WAM "intent-to-use" application on December 1, 2004, and that 12 months later, on December 1, 2005, the PTO issues you a Notice of Allowance. This will tell you that, before the PTO will actually register the mark, you must use it in commerce,[5]and then file a Statement of Use with the PTO. Assume further that you first use the mark in commerce on March 1, 2006; that you, then, immediately file a Statement of Use; and that the PTO actually registers the mark on September 1, 2006. Having then met the contingency of registration, your "right of priority" in WID-WAM dates runs not merely from September 1, 2006, but from 21 months earlier — i.e., from December 1, 2004, the date you filed the application.
Important consequences follow from this. Continuing with the same example, suppose XYZ, a big national widget-maker, started actually selling WID-WAM for widgets in commerce on December 10, 2004 — just 10 days after you filed your "intent-to-use" application, but more than 14½ months before you actually started to sell WID-WAM. Furthermore, assume that XYZ sold in all 50 states on December 10, 2004. Assume further that all of your sales have always been confined to the 6 New England states — no place else. Finally, assume that, on December 11, 2004, XYZ files a "use" application with the PTO for WID-WAM in connection with widgets.
Two questions. First, since XYZ started selling WID-WAM widgets more than a year before you did — including in the 6 New England states — doesn't XYZ, as the first actual user of WID-WAM for widgets, have a "right of priority" in WID-WAM? Answer: No. Second question, at the very least, doesn't XYZ have a "right of priority" in WID-WAM for the 44 non-New England states, where you've never made a sale. Answer: No. You win; XYZ loses.
This may seem unfair to XYZ, but it simply waited too long. It waited until it actually used WID-WAM in commerce before it filed its application with the PTO. You, in stark contrast, knew about the Federal statute under which you could get a "right of priority, nationwide in effect," dating to the time you filed your "intent-to-use" application. And because of that knowledge, you win.
This article is intended to serve as a summary of the issues outlined herein. While it may include some general guidance, it is not intended as, nor is it a substitute for, legal advice. Your receipt of Good Company or any of its individual articles does not create an attorney-client relationship between you and Sheehan Phinney Bass + Green or the Sheehan Phinney Capitol Group. The opinions expressed in Good Company are those of the authors of the specific articles.
[1]A professional search is always advisable. It can, and does, happen that a mark which does not show up on a check of the PTO database will show up in a professional search Report. And an earlier user of the mark may later succeed in a claim that your use of the mark, even if registered by the PTO, infringes his use of the mark.
[2]15 U.S.C. §1057(c).
[3]This means getting the mark registered on the PTO's principal register, as distinguished from its supplemental register, which exists for marks that are not yet registrable on the principal register but are capable of becoming so.
[4]The word "after" is important, however. If someone else is already using the mark, or seeking to have it registered with the PTO, you will not have a right of priority with respect to that person.
[5]"Use in commerce" means, essentially, sale or transportation across state lines.
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