Trademark Law in the USA

Fraud on the PTO bars claim

Fraud on the PTO will bar claims for trademark infringement.
In a 2016 decision between Amusement Art v Life is Beautiful LCC, a Federal District Court in California affirmed the principle that Fraud on the PTO will bar claims for trademark infringement:

Between 2011 and 2012, Amusement Art filed eight ITUs for “Life is Beautiful” covering paints, electronics and accessories, jewelry, paper goods and printed matter, rubber goods, leather goods, housewares and glassware, and textiles. AA executives filed Statements of Use, under penalty of perjury, asserting that AA had actually used the phrase “Life is Beautiful” as a trademark to sell approximately 257 categories of goods within the application classes. AA also submitted pictures of various goods with “Life is Beautiful” sales tags attached to them. In September of 2014, one month before suing, AA also filed an application for Life is Beautiful” for festival and community events.

When LIB determined that AA didn’t actually sell many of the goods on which it obtained registrations, it told AA that it was going to seek cancellation on the basis of fraud on the PTO. AA surrendered eight of the registrations, but retained its 2014 registration in connection with festivals and art events.

LIB argued that all of plaintiffs’ “Life is Beautiful”-based trademark claims were barred by unclean hands.   This requires clear and convincing evidence “[1] that the plaintiff’s conduct is inequitable and [2] that the conduct relates to the subject matter of [Plaintiff’s] claims.”  The inequitable conduct here was fraud on the PTO in claiming use.  AA argued that there was no evidence that its statements were made knowingly or with intend to defraud the PTO.

Fraud on the PTO in acquiring a patent can give rise to an unclean hands defense.  Similar logic bars recovery in trademark.  Cancelling a registration for fraud requires: “(1) a false representation regarding a material fact; (2) the registrant’s knowledge or belief that the representation is false; (3) the registrant’s intent to induce reliance upon the misrepresentation; (4) actual, reasonable reliance on the misrepresentation; and (5) damages proximately caused by that reliance.” The parties didn’t dispute that the statements of use submitted by AA were material false statements nor that the PTO reasonably relied on those misrepresentations.

As for knowledge and intent elements, “no rational jury could credit Plaintiffs’ claim that the false statements were innocent mistakes in light of the extent of the deception.”  AA filed eight separate registrations representing use on hundreds of categories of goods.  There was no evidence that AA mistakenly believed it actually sold most of the claimed goods.  Instead, AA argued that the executives who filed the applications were not native English speakers and that they filed the applications without the assistance of an attorney. “This explanation is implausible given that Plaintiffs have lived in the United States and spoken English for over 30 years and have also affirmed that they have filed trademark applications across the world.”  But the bigger problem was that AA didn’t explain the several “deceptive” photos submitted with the applications showing goods staged with “Life is Beautiful” tags though these goods were never actually sold.
https://tushnet.blogspot.ca/2016/12/ugly-facts-doom-life-is-beautiful.html

Generic Trademark

A generic trademark is never entitled to trademark protection if it the generic name of goods or services on or in connection with which it has been used. A generic term can never become a trademark.

“[N]o matter how much money and effort the user of a generic term has poured into promoting the sale of its merchandise and what success it has achieved in securing public identification, it cannot deprive competing manufacturers of the product of the right to call an article by its name.”

See Abercrombie & Fitch, 537 F.2d at 9

What is a Generic Trademark?

A trademark becomes a generic trademark by genericide. This happens when a trademark becomes the name of the thing instead of an indicator of the source of a thing. For example, is Velcro a generic trademark?
For example, is Velcro a generic trademark? Probably, because when someone asks you to buy them some Velcro, you ask them what size and length. Velcro has become the name of a thing. So the Velcro company now wants you to call their fasteners Velcro hook and loop fasteners.

Velcro was a patented invention and only the Velcro company could make it. And they labeled their fasteners as just Velcro, not Velcro Fasteners or Velcro Hook and Loop Fasteners. It is now more than 40 years after their patent expired, and the Velcro company is worried that their brand has become a generic trademark. So they sing the following song.

We’re a company that’s so successful that everywhere you go, you see this scratchy, hairy fastener and you say, “Hey! That’s velcro!”

But even though we invented this stuff, our patent lapsed 40 years ago. Now no matter who else makes it, you still want to call it ‘velcro.’
You think it’s awesome for us, we’re famous but we’re lawyers and it’s causing us grief.
‘Cause there are trademark laws being broken, it’s all here in this short legal brief. And we know that this is confusing because Velcro Brand is who we are.
But if you call it call ‘velcro’… we’re gonna lose that circled ‘R’.
This is called ‘hook and loop,’ This part’s a hook, this part’s a loop.
You call it ‘velcro,’ but we’re begging you, this is (bleep)-ing ‘hook and loop.’
We know this seems ridiculous, this is a first-world situation. And we made half of a billion last year, I went to Turks on my last vacation.
And we’re asking you not to say a name, we took 60 plus years to build.
But if you keep calling these ‘velcro’ shoes, our trademark will get killed.
(Yeeeeaaaahhhhh)
We aren’t just doing this for us, we’re doing it for all the successful brands that got so popular people started using the brand names the wrong way.
So, please remember…
If you need something to clean up your socks, do it with bleach and not with (bleep.)
If you have blood from a boo-boo you made, this is a bandage and not a (bleep.)
If you’re exercising with someone you’re dating, it’s inline skating and not (bleep.)
I know that bleeped stuff is more fun to say, but if you keep doing it our trademarks go away.
This is called ‘hook and loop,’ this part’s a hook, this part’s a loop.
You call it ‘velcro’ but we’re begging you, this is (bleep)-ing ‘hook and loop.’

The Velcro company is trying to stop the genericide of their Velcro brand.

What is Genericide?

Genericide is the death of a trademark. It may sound dramatic and for a trademark owner, it is. It means that the trademark owner’s once strong and powerful trademark is now a generic word and may be used by anyone to sell their goods and services.
A genericized trademark is a trademark that is no longer valid and is now available for everyone to use. Under trademark law, genericide, or the conversion of a trademark into a generic phrase, occurs when a trademark becomes the generic word for the product or service the trademark is associated with.

Lanham Act Section 14(c) provides for cancellation of a registered mark if at any time it becomes the common descriptive name of article or substance, so that proof of secondary meaning, which allows registration of some “merely descriptive” marks, cannot transform a generic term into a subject for a trademark. See Abercrombie & Fitch, 537 F.2d 4

Section 14(c) of the Lanham Act is now section 14(3) of the Lanham Act.

SECTION 14 OF THE LANHAM ACT: §1064 CANCELLATION OF REGISTRATION

(3) At any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or is functional, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of section 1054 of this title or of subsection (a), (b), or (c) of section 1052 of this title for a registration under this chapter, or contrary to similar prohibitory provisions of such prior Acts for a registration under such Acts, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used. If the registered mark becomes the generic name for less than all of the goods or services for which it is registered, a petition to cancel the registration for only those goods or services may be filed. A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.

Benefits of Trademark Registration

Seminal Cases on Generic Trademarks:

The seminal cases on generic trademarks make the following points of law:

Thermos Is a Generic Trademark

Thermos for an insulated beverage container.
In order to become generic, the principal significance of the word must be its indication of the nature or class of an article, rather than an indication of its origin.” King-Seeley Thermos Co. v. Aladdin Indus., Inc., 321 F.2d 577, 579 (2d Cir.1963)
 

Aspirin Is a generic Trademark

Aspirin is known as a headache medicine.
Judge Learned Hand stated the sole issue in Aspirin to be: “What do the buyers understand by the word for whose use the parties are contending? If they understand by it only the kind of goods sold, then, I take it, it makes no difference whatever what efforts the plaintiff has made to get them to understand more.” Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y.1921), 272 F. at 509
 
 

All of these generic words were once exclusive trademarks:
Cellophane for “transparent cellulose film.”
 
Murphy Bed for a fold-up wall bed.
 
Yo-Yo for the toy.
Escalator for the mechanical stairs.
Google is not on the above list because the 9th Circ. ruled that ‘Google’ Is Not Generic Trademark

ELLIOTT V. GOOGLE, 9th Circuit File No. 15-15809, D.C. No. 2:12-cv-01072-SMM

Between February 29, 2012, and March 10, 2012, Chris Gillespie used a domain name registrar to acquire 763 domain names that included the word “google.” Each of these domain names paired the word “google” with some other term identifying a specific brand, person, or product— for example, “googledisney.com,” “googlebarackobama.net,” and “googlenewtvs.com.”
The Ninth Circuit ruled on May 17, 2017, that “Google” has not become a generic trademark like “aspirin” or “thermos,” rejecting a case claiming the tech giant had lost control of the name because of widespread use of “google” as a verb.
The Ninth Circuit panel of judges affirmed the district court’s summary judgment in favor of Google, Inc., in an action under the Lanham Act, seeking cancellation of the GOOGLE trademark on the ground that it is generic.
The panel held that a claim of genericness or “genericide,” where the public appropriates a trademark and uses it as a generic name for particular types of goods or services irrespective of its source, must be made with regard to a particular type of good or service. The district court thus correctly focused on internet search engines rather than the “act” of searching the internet. The panel also held that verb use of the word “google” to mean “search the internet,” as opposed to adjective use, did not automatically constitute generic use. The panel affirmed the district court’s conclusion that the plaintiffs’ evidence was insufficient to establish that the primary significance of the word “google” to the relevant public was as a generic name for internet search engines, rather than as a mark identifying the Google search engine in particular.
The Supreme Court rejected Elliott and Gillespie’s petition to review a asserting that the term “google” has become too generic and therefore unqualified for trademark protection on Oct 23, 2017.
https://arstechnica.com/tech-policy/2017/10/supreme-court-wont-nullify-google-trademark-in-genericide-challenge/

Google’ TM So Common It’s Become Generic, 9th Circ. Told

Law360, San Francisco (March 17, 2017, 7:31 PM EDT) — Two men who’ve bought hundreds of domains containing the word “google” asked the Ninth Circuit at a hearing Friday to revive their case arguing “google” is so commonly used that it’s become a generic term meaning “to search the internet,” and not a valid trademark for the popular search engine.
Richard Michael Wirtz of Wirtz Law APC — attorney for plaintiffs David Elliott and Chris Gillespie — said the suit was improperly dismissed by U.S. District Judge Stephen McNamee at the summary judgment stage, in spite of a plethora of evidence — including consumer surveys, the testimony of two linguists and dictionary definitions — that suggested the word has become generic. All this evidence presented a triable issue of fact that needed to go before a jury, he said.
Judge Richard Tallman didn’t seem so sure. He said he couldn’t understand why the consuming public couldn’t use the term “google” colloquially in a general sense, while understanding it as a trademark referring to a specific company as well, just as “coke” can mean Coca-Cola but can also refer to similar sodas, like Pepsi.
“If the consumer understands there is a distinction between the two, why does that establish genericization?” the judge asked. “It just means that we’ve developed a shorthand term, which everyone knows comes from the preeminent search engine on the internet.”
“That’s exactly what happens in genericide,” Wirtz answered. “Look at the marks that have been made generic. People use ‘escalator’ to mean a moving staircase, and the court said, ‘Sorry, I know you spent a lot of time developing this and marketing it, but you’ve done so well that everyone knows a moving staircase is an escalator we’re going to adopt that.’ Yo-yo, aspirin, heroin: these are all generic forms of a trademark that the owners were not happy about.”
But Google attorney Angela Dunning of Cooley LLP told the judges that the plaintiffs’ evidence was questionable because they hadn’t proved that “google” had become a generic term that referred to all search engines, or that it was common parlance to call any search engine “a google.”
She also said their expert linguists admitted “Google” is a trademark, and the dictionaries had secondary definitions that referred to the company. Their surveys didn’t follow standard protocol with clarifying follow-up questions, and they didn’t get to the issue central in the case, she said.
“It was plaintiffs’ burden in this case, where we have a registered mark, to show that the Google mark had become generic,” Cooley said. “The fact that many people may use a mark casually in conversation as a verb, an adjective or some other part of speech doesn’t answer the question of whether its primary significance is as a trademark or not. That question goes to what people understand, the mind of the consumer. Their evidence is not sufficient. It was plaintiffs’ burden, and they didn’t meet it.”
Judges Paul J. Watford, Richard C. Tallman and Louis Guirola Jr. sat on the panel.
The plaintiffs are represented by Thomas Daniel Foster of TD Foster and Richard Michael Wirtz of Wirtz Law APC.
Google is represented by Angela Dunning of Cooley LLP and Robert W. Shely of Bryan Cave LLP.
The case is David Elliott et al. v. Google, case number 15-15809, in the U.S. Court of Appeals for the Ninth Circuit.
–Editing by Orlando Lorenzo.

But what about “google” for searching the web?

In a recent case before the Ninth Circuit, the court held that “google” was not a generic term and was a protectable trademark, re-affirming that even if a trademark is widely-used by the generic public as a verb, that does not mean that the trademark is considered generic.
The Plaintiff, David Elliot, purchased over 700 domain names with the word “Google” in them. After Google successfully won a domain name dispute, Elliot filed to cancel Google’s trademarks. The district court dismissed the claims and the Ninth Circuit affirmed the dismissal.
While the Ninth Circuit confirmed what many people thought—that “Google” is a strong, protectable trademark, the case shines a spotlight on what trademark owners need to be aware of when promoting and protecting their own brands. While Google may have won this one, the owners of the trademarks mentioned above weren’t as successful, and lost valuable trademark rights because of it.

Generic Words Cannot Function as Trademarks

Generic words or phrases cannot be trademarks, because the public would never think that the generic word is connected to one specific company. From a business perspective, generic terms are simply too useful for identifying a particular product and granting a single company a monopoly over a generic term would give that company too great of a competitive advantage. When deciding the “generic” word for a product, think of what you would call the unbranded version of that item. The generic term for an iPhone is a mobile phone or cellular phone. The generic term for a Dell is a computer. When there are little to no other basic names for a product, you’ve likely found the generic term.
However, this is contrasted with descriptive terms, which can act as a trademark, but only after the user has effectively promoted the trademark so that, when consumers think of the descriptive word in connection with specific products (or services), they only think of that one “source.” For example, American Airlines is an airline based in America. However, from decades of use and promotion, they now enjoy exclusive rights in the phrase. “National” for a nationwide car rental chain is another example. American Airlines, however, will never be able to own just the word “Airlines” because the word is generic for a flight-provider.

Genericide – What happens once a trademark becomes generic?

Unfortunately for the trademark owner, once a trademark becomes generic it loses its trademark protection and it becomes available to the public. This means that competitors gain the freedom to refer to their products using the genericized word because that word no longer represents the source of a service, it now represents the product and/or its general category.
However, this is never an overnight thing. It takes years and years before a trademark becomes generic through genericide. Also, if a trademark becomes generic, it only becomes generic for specific goods and services. A thermos might be the generic name for an insulated beverage container, but THERMOS® is still a protectable outdoors/leisure brand for a number of other, non-generic products. Genericism is not a free-ride to use a competitor’s trademark.

How to avoid genericism

There are various approaches companies can adopt to prevent their trademark from becoming generic. As much and whenever possible, companies should really focus on educating the consumer that their mark is the source of the product, not the product itself. Early, on, companies can establish guidelines for the use of their mark, such as determining how their trademark will be used and displayed in commerce – whether it will always carry the ® or ™ signs, or whether it will be used as a verb or noun (which was Elliott’s claim against Google).
Another way to prevent trademarks from becoming generic is to advertise the trademark or brand name along with the general term, instead of just the trademark. For example, “Jell-O gelatin” or “Kleenex® Brand Tissue.” If possible, companies that can afford to run advertising campaigns should adopt slogans that explain their intended use of their mark. For instance, Xerox’s advertising campaign reads: “You can’t Xerox a Xerox on a Xerox. But we don’t mind at all if you copy a copy on a Xerox® copier.”
Companies like Xerox take such steps and go even further by requiring their licensees that their name not be used as a verb. Their licensing agreements for example, require businesses to refer to the action their products serve as “copying” rather than “Xeroxing.” They do so because it is crucial to educate not just the consumer, but also the company’s distribution network of the proper and intended use of the mark.
Finally, while it is technically possible to revive a brand after genericide, this process can take years and a significant amount of money. And even so, it is not guaranteed to work.

Takeaway

When difficult to assume the high costs of advertising campaigns, trademark owners can prevent genericism of their marks by starting off on the right foot. Setting clear guidelines as to brand name use from the very beginning is likely to educate consumers as to the right use of the mark without having to make unnecessary expenditures on revival ad campaigns.

Nominative Fair Use Lanham Act

Nominative fair use is a legal doctrine that provides an affirmative defense to trademark infringement as enunciated by the United States Ninth Circuit, by which a person may use the trademark of another as a reference to describe the other product, or to compare it to their own. Nominative use may be considered to be either related to, or a type of “trademark fair use” (sometimes called “classic fair use” or “statutory fair use”). Jardine and the Demise of a Doctrine” by Chad J. Doellinger
All “trademark fair use” doctrines, however, are distinct from the fair use doctrine in copyright law. However, the fair use of a trademark may be protected under copyright laws depending on the complexity or creativity of the mark as a design logo. [2]
The nominative use test essentially states that one party may use or refer to the trademark of another if:

  1. The product or service cannot be readily identified without using the trademark (e.g. trademark is descriptive of a person, place, or product attribute).
  2. The user only uses as much of the mark as is necessary for the identification (e.g. the words but not the font or symbol).
  3. The user does nothing to suggest sponsorship or endorsement by the trademark holder. This applies even if the nominative use is commercial, and the same test applies for metatags.

Furthermore, if a use is found to be nominative, then by the definition of non-trademark uses, it can not dilute the trademark.
Nominative use does not require that ownership of the trademark be acknowledged, for example by use of a sentence such as “UNIX is a registered trademark of The Open Group”. Such statements may, however, be required by the terms of a license agreement between the parties, and they may be prudent (and courteous) as a way of preventing misunderstandings or allegations of passing off.

Registering domain names containing famous trademarks under Nominative Use or Fair Use:

Don’t register a domain containing a famous brand that contains a coined word such as Google, YouTube, Facebook, or Kodak, unless you plan on using it under the nominative fair use doctrine. It is very difficult to justify such a decision because coined words are entitled to strong trademark protection.
Survey says: No, don’t register the domain name if it contains a coined word and there is no fair use in the contexts of:

  1. Criticism sites,
  2. Fan sites, and
  3. Nominative use.

Examples of fair use:
Porsche.social
mercedesforum .com: Mercedes Benz Enthusiast Forums and
mercedestalk .net
Philip Morris USA Inc. v. Borut Bezjak, A Domains Limited, WIPO Case No. D2015-1128, <marlboro .party>, Denied
Azimo Ltd. v. Vladimir Zubkov, WIPO Case No. D2016-2608, <http://azimoreview .com>, Denied
http://buy-a-lexus .com and buyorleaselexus .com
The Respondent in Porsche.social argued that it planned to use the PORSCHE trademark in connection with a free community or fan site for Porsche car enthusiasts. It also stated an intent to disclaim “on every webpage” any affiliation with or authorization by Complainant, the owner of the Porsche brand. The URS Examiner held this was a fair use, finding that “[t]he use of ‘.social’ in the domain name, and the screenshot from Respondent’s website are evidence of that intent.”
The Examiner’s determination suggests the following equation:
[third party trademark] + [.social TLD] + [plans for a free fan site] = fair use (to defeat a URS complaint)
Furthermore, the Examiner found the .social TLD suffix to be evidence of intent to make a fair use.
UDRP panels have recognized fan/community sites that are clearly active and noncommercial to be fair uses (even where the second level domain is a Complainant’s trademark in its entirety). See 2001 White Castle Way, Inc. v. Glyn O. Jacobs (WIPO Case No. D2004-0001, March 26, 2004); see also WIPO UDRP guidelines. URS Procedure Rules 5.7 & 5.8 list defenses and circumstances that may refute a cybersquatting claim:

  • Registrant is making a legitimate or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
  • The domain name is generic or descriptive and the Registrant is making fair use of it.
  • The domain name sites are operated solely in tribute to or in criticism of a person or business that is found by the Examiner to be fair use.

Moreover, the U.S. Court of Appeals for the Ninth Circuit has ruled that nominative fair use extends to trademarks incorporated into domain names. See Toyota Motor Sales, U.S.A., Inc. v. Farzad Tabari, et al., 610 F.3d 1171 (9th Cir. 2010).
New gTLDs and the URS (Case Brief: Porsche.social)
WIPO UDRP Overview3.0:
2.8 How do panels assess claims of nominative (fair) use by resellers or distributors?
While the following section primarily concerns cases involving “bait and switch” or other related unfair trade practices, many of the principles outlined above, especially at section 2.5 with respect to fair use, underpin the following section.
2.8.1 Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making abona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the “Oki Data test”, the following cumulative requirements will be applied in the specific conditions of a UDRP case:

  • (i) the respondent must actually be offering the goods or services at issue;
  • (ii) the respondent must use the site to sell only the trademarked goods or services;
  • (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
  • (iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.

The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark.
2.8.2 Cases applying the Oki Data test usually involve a domain name comprising a trademark plus a descriptive term (e.g., “parts”, “repairs”, or “location”), whether at the second-level or the top-level. At the same time, the risk of misrepresentation has led panels to find that a respondent lacks rights or legitimate interests in cases involving a domain name identical to the complainant’s trademark. [See section 2.5.1 above.]
Panels have found that PPC websites do not normally meet the Oki Data requirements as they do not themselves directly offer the goods or services at issue. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Jurisprudential Overview 3.0”)
Registering Generic Terms
The guys who registered 100s of domains with the word Google lost their appeal on May 16, 2017. They lost a lot money trying to prove that Google had become a generic term. David Elliott, et al v. Google Inc.; case number 15-15809, in the U.S. Court of Appeals for the Ninth Circuit.
If you are a startup, find a generic or arbitrary noun. Any other choice is usually fraught with troubles. Litigation is a bad way to start a business because it saps time and capital from your business.
However, there can be minimal skirmishes with almost any choice that are usually resolved with communication and differentiation.
And if your domain contains an arbitrary or generic term that is already trademark, apply to register the mark on the basis of intent to use, before using it, so that you can resolve the trademark issues in the trademarks office instead of Federal Court.
Legal Domain Name Choices

  1. Arbitrary marks with diverse owners, if more than one word, yes if combination creates new association ;
    Delta Faucets v. Delta Airlines v. Delta Courier or something.
    Apple Computer v. Apple Records (Beetles)
  2. Surname marks, if it is your surname:
    i.e. Nissan .com, but the use is limited.
    MichaelsTech.net
  3. Generic marks, if you make a non-confusing use, that is either generic or arbitrary, which is what Apple Computers did.

 

References

David S. Welkowitz (2002). Trademark Dilution: Federal, State, and International Law. BNA Books (Bureau of National Affairs). p. 325. ISBN 1-57018-313-9Since nominative fair uses are nontrademark uses, no dilution can occur

Priority Date

The priority date for a trademark application or a PCT application is the date that the application was previously filed in a country of the Union of the Paris Convention.
This previous filing date shall be within the past six months to claim a priority date in another country of the Union for industrial designs and trademarks. See part C of Article 4 below for the details and extensions due to holidays.
This previous filing date shall be within the past twelve months for patents and utility models. See part C of Article 4 below for the details and extensions due to holidays.

Priority Date Q & A

Q. May use the priority date of a previously filed application, even if I abandoned that application?
A. Yes, you may. The priority claim works regardless of “the subsequent fate of the [priority] application.”
Q. Foreign applicant files home country application listing several goods.
Foreign applicant deletes one of the goods from the home country application, before the 6-month priority deadline for foreign filings.
Can the applicant include the deleted good in its US application based on 44(d)?
A. The claimed priority date will survive. The US application should also claim section 1(a) [Use in commerce.]
Q. Can the applicant include the deleted good in its US application based on 44(e)?
A. The claimed priority date will survive. The US application should also claim section 1(b) [Proposed Use in commerce] and then file a statement of use before the application will mature to registration within the allowed time period.
To better understand the ins and outs of priority dates, please read pages 43 to 60 of Professor G. H. C. BODENHAUSEN’s GUIDE TO THE APPLICATION OF THE PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY AS REVISED AT STOCKHOLM IN 1967.

Paris Convention
for the Protection of Industrial Property

of March 20, 1883,
as revised at Brussels on December 14, 1900,
at Washington on June 2, 1911,
at The Hague on November 6, 1925,
at London on June 2, 1934,
at Lisbon on October 31, 1958,
and at Stockholm on July 14, 1967,
and as amended on September 28, 1979

Article 4
A to I. Patents, Utility Models, Industrial Designs,
Marks, Inventors’ Certificates: Right of Priority
G. Patents: Division of the Application

A.
(1) Any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed.
(2) Any filing that is equivalent to a regular national filing under the domestic legislation of any country of the Union or under bilateral or multilateral treaties concluded between countries of the Union shall be recognized as giving rise to the right of priority.
(3) By a regular national filing is meant any filing that is adequate to establish the date on which the application was filed in the country concerned, whatever may be the subsequent fate of the application.
B. Consequently, any subsequent filing in any of the other countries of the Union before the expiration of the periods referred to above shall not be invalidated by reason of any acts accomplished in the interval, in particular, another filing, the publication or exploitation of the invention, the putting on sale of copies of the design, or the use of the mark, and such acts cannot give rise to any third-party right or any right of personal possession. Rights acquired by third parties before the date of the first application that serves as the basis for the right of priority are reserved in accordance with the domestic legislation of each country of the Union
C.
(1) The periods of priority referred to above shall be twelve months for patents and utility models, and six months for industrial designs and trademarks.
(2) These periods shall start from the date of filing of the first application; the day of filing shall not be included in the period.
(3) If the last day of the period is an official holiday, or a day when the Office is not open for the filing of applications in the country where protection is claimed, the period shall be extended until the first following working day.
(4) A subsequent application concerning the same subject as a previous first application within the meaning of paragraph (2), above, filed in the same country of the Union shall be considered as the first application, of which the filing date shall be the starting point of the period of priority, if, at the time of filing the subsequent application, the said previous application has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and if it has not yet served as a basis for claiming a right of priority. The previous application may not thereafter serve as a basis for claiming a right of priority.
D.
(1) Any person desiring to take advantage of the priority of a previous filing shall be required to make a declaration indicating the date of such filing and the country in which it was made. Each country shall determine the latest date on which such declaration must be made.
(2) These particulars shall be mentioned in the publications issued by the competent authority, and in particular in the patents and the specifications relating thereto.
(3) The countries of the Union may require any person making a declaration of priority to produce a copy of the application (description, drawings, etc.) previously filed. The copy, certified as correct by the authority which received such application, shall not require any authentication, and may in any case be filed, without fee, at any time within three months of the filing of the subsequent application. They may require it to be accompanied by a certificate from the same authority showing the date of filing, and by a translation.
(4) No other formalities may be required for the declaration of priority at the time of filing the application. Each country of the Union shall determine the consequences of failure to comply with the formalities prescribed by this Article, but such consequences shall in no case go beyond the loss of the right of priority.
(5) Subsequently, further proof may be required.
Any person who avails himself of the priority of a previous application shall be required to specify the number of that application; this number shall be published as provided for by paragraph (2), above.
E.
(1) Where an industrial design is filed in a country by virtue of a right of priority based on the filing of a utility model, the period of priority shall be the same as that fixed for industrial designs.
(2) Furthermore, it is permissible to file a utility model in a country by virtue of a right of priority based on the filing of a patent application, and vice versa.
F. No country of the Union may refuse a priority or a patent application on the ground that the applicant claims multiple priorities, even if they originate in different countries, or on the ground that an application claiming one or more priorities contains one or more elements that were not included in the application or applications whose priority is claimed, provided that, in both cases, there is unity of invention within the meaning of the law of the country.
With respect to the elements not included in the application or applications whose priority is claimed, the filing of the subsequent application shall give rise to a right of priority under ordinary conditions.
G.
(1) If the examination reveals that an application for a patent contains more than one invention, the applicant may divide the application into a certain number of divisional applications and preserve as the date of each the date of the initial application and the benefit of the right of priority, if any.
(2) The applicant may also, on his own initiative, divide a patent application and preserve as the date of each divisional application the date of the initial application and the benefit of the right of priority, if any. Each country of the Union shall have the right to determine the conditions under which such division shall be authorized.
H. Priority may not be refused on the ground that certain elements of the invention for which priority is claimed do not appear among the claims formulated in the application in the country of origin, provided that the application documents as a whole specifically disclose such elements.
I.
(1) Applications for inventors’ certificates filed in a country in which applicants have the right to apply at their own option either for a patent or for an inventor’s certificate shall give rise to the right of priority provided for by this Article, under the same conditions and with the same effects as applications for patents.
(2) In a country in which applicants have the right to apply at their own option either for a patent or for an inventor’s certificate, an applicant for an inventor’s certificate shall, in accordance with the provisions of this Article relating to patent applications, enjoy a right of priority based on an application for a patent, a utility model, or an inventor’s certificate.
http://www.wipo.int/treaties/en/text.jsp?file_id=288514
 
These points of authority do not necessarily reflect the views of the writer. This blog is not legal advice. These posts are just notes.

Dawn Donut Rule

Is the Dawn Donut rule still good trademark law? Yes, in most circuits.

Dawn Donut rule

The Dawn Donut rule was first announced in the 1959 case of Dawn Donut Co. v. Hart’s Food Stores, Inc., 267 F.2d 358 (2nd Cir. 1959). The court asked, if the mark owner is not in the area (by sales or at least reputation) how can there be confusion.
In Dawn Donut, the Second Circuit Court of Appeals stated that:

“If the use of two marks by the registrant and the unauthorized user are confined to geographically separate markets, with no likelihood that the registrant will expand his use into the defendant’s market . . . then the registrant is not entitled to enjoin the junior user’s use of the mark.”

This rule is triggered where a plaintiff has obtained a federal trademark registration, an unauthorized third party begins using the same or similar mark in good faith after the federal registration was obtained but the plaintiff does not operate and has no immediate plans to expand into the same geographic market as the Defendant. The practical effect of this doctrine establishes a per se rule against injunctions for trademark infringement where the plaintiff does not operate in defendant’s geographic market even after it has obtained a federal registration. The Second Circuit defended this doctrine by reasoning that there could be no likelihood of confusion for a court to enjoin until the plaintiff enters into the defendant’s geographic market.

Is the Dawn Donut rule still valid?

Although a majority of courts have adopted the rule set out in Dawn Donut’s, with the advent of the Internet, mass nationwide advertising and convenient methods of travel, many scholars and organizations have criticized this rule as outdated and impracticable. Despite such criticism, only one court has not applied the Dawn Donut Rule:

Circuit City Stores v. CarMax, 165 F.3d 1047 (6th Cir. 1999).

Thus, until Dawn Donut is overruled or rejected by a significant number of courts the Dawn Donut Rule should be considered before asserting federal trademark rights.

Why should a foreign company get better rights than a US company has under the Dawn Donut rule?

The Dawn Donut rule also comes up when a foreign trademark registers their mark in the USA based on treaty rights under section 44(e).
A registrant is usually unable to successfully show a likelihood of confusion because a court is unable to compare channels of trade, classes of consumers, the strength of the pleaded mark, and various other duPont-like factors in order to determine likelihood of confusion.
Professor McCarthy states, in his treatise called McCarthy on Trademarks at sections 19.27, 29.4, and 29.21:

  1. He promotes the theory that common law rights can exist for a mark that is well-known but not used in the U.S., stating in 29.4, “The famous mark rule could be viewed as not constituting an exception to the general rule at all, since it could be said that the foreign service business had already established priority in the United States through advertising and reputation prior to defendant’s opening.”  (I realize cases in the 2nd, 9th, and Fed. Cir. (at least) have something to say about this)

And

  1. This paragraph from Fila Sport, S.p.A. v. Diadora Am., Inc., 141 F.R.D. 74, 80 (N.D. Ill. 1991), suggests that a 44(e) registration is sufficient to establish jurisdiction and assert a claim under Section 32 (regardless of whether it might be a loser b/c of inability to prove likelihood of confusion).

“However, this statute only affects the when, how and why of filing the application. It does not grant federal jurisdiction independent of that existing for applications based upon actual use or upon actual registration. So that the statute makes it easier and more convenient for a foreign trademark holder to file for trademark registration in the U.S., but it does not grant that foreign trademark holder any right to sue in federal court absent actual use in the U.S. or final actual registration in this country. It does not grant the same rights to applicants as exist for actual registrants. Fila is at this point only an applicant. Absent a valid actual registration of its mark, Fila must allege either diversity jurisdiction, or use in interstate commerce.”

Dawn Donut Rule References:

Is the Dawn Donut Rule Still Viable in the Internet Age? INTA April 2012
These points of authority do not necessarily reflect the views of the writer. This blog is not legal advice. These posts are just notes.