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"First-to-Use" versus "First-to-File" versus "Intend to Use"

When a mark is placed on a package or the side of a truck that identifies a good or service, it is said to be used in commerce. The first person to use a mark in commerce has what is called priority. When filing for trademark protection in most states or with the United States Patent and Trademark Office (USPTO), two dates need to be established. The first is known as the first use in commerce date, and the second is known as the first use date. The first use date is the first date that you actually made use of the particular mark in connection with the goods or services for which you’re applying. The first use in commerce date means a bona fide sale or transportation in commerce which may lawfully be regulated by a state or interstate, by Congress. There are two elements needed to meet this requirement. First, it has to be sold to a consumer; even one sale meets this requirement. Second, to meet the bona fide requirement the question is,”was it followed by activities providing a continuous effort or intent to use the mark?” Say I want to produce and sell back scratchers and call them “Itchy Friend.” I would create a website with a picture of the back scratcher and a logo saying “Itchy Friend” with a “Buy it Now” feature. Until someone actually purchases the back scratcher, I have not used it in commerce and cannot register it for protection. I could reserve it with the Trademark Office under an "Intent to Use" application.

Can you reserve a trademark for future use? In some states trademark reservation is available. You may also file an Intent to Use Application with the USPTO. If someone else has already registered the mark, the Examiner will simply deny the registration of the mark. If someone has registered the mark, but is no longer using it, you can challenge the validity of the mark on the grounds of abandonment. A good case that deals with this issue is Guiding Eyes for the Blind v. Guide Dog Foundation for the Blind, 55 C.C.P.A. 701, 384 F.2d 1016 (1967). This is a case about a service mark registration denied because of likelihood of confusion. Likelihood of confusion means a consumer might buy a brand from one manufacture thinking they are buying from another. In the Guiding Eyes case, the US Trademark Office would not allow Guiding Eyes for the Blind registration of the service mark “Guiding Eyes” because the Guide Dog Foundation for the Blind had used it first and was still using it. When a trademark applicant wants to challenge a trademark registration, they have the burden of proving why the trademark should be cancelled. Once the applicant has proven why the trademark should be canceled and the Trademark Office cancels it, they may then have the registration assigned to them. Guide Dog Foundation for the Blind was once called Guiding Eyes, Inc., but had changed their name years ago. Nevertheless, Guiding Eyes for the Blind was unable to prove that the Guide Dog Foundation for the Blind was no longer using the service mark “Guiding Eyes” and was not given the registration for the service mark. In the end, Guiding Eyes for the Blind was allowed to register “STEP Guiding Eyes for the Blind Successive Training and Enrichment Program.”

If you have a trademark or service mark idea and want to see if you can register it, the best place to start is contacting a trademark attorney to discuss if the mark is available. If you have any questions about this article please send Trademark Attorney George Leone an email.

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