Although an applicant cannot rely on use-analogous-to-trademark use or mere trade name use when filing a 1(a) use based application, this type of use may be sufficient to prevail in a priority dispute. Technical trademark use is needed to file a 1(a) use-based application. This means "use in commerce" is necessary. See our web page entitled, For The Purposes Of Trademark Law What Is Use In Commerce, where we discuss in detail the various ways an applicant can satisfy the use in commerce requirement for the purposes of filing a federal trademark application with the United States Patent & Trademark Office ("USPTO"). This page will address the less stringent use requirement for priority disputes.
See First Niagara Insurance Brokers, Inc. v. First Niagara Financial Group Inc., 476 F.3d 867, 81 USPQ2d 1375 (Fed Cir 2007), where the Court held that if a plaintiff alleges a likelihood of confusion claim, he does not have to show use of the mark in commerce to establish priority. Instead, he only needs to show that the mark was used in the United States. Priority use or use-analogous-to-trademark use has to have a sufficient and substantial impact on the purchasing public to establish proprietary rights. In other words, a prior use must create an association in the minds of the purchasing public between the subject trademark and the goods and/or services at issue. See also, Malcolm Nicol & Co. v. Witco Corp., 881 F.2d 1063, 11 USPQ2d 1638 (Fed. Cir. 1989).
How much exposure is enough to create public identification of the subject term in connection with the goods and services? This question was addressed in T.A.B. Sys. v. Pactel Teletrac, 77 F.3d 1373, 37 USPQ2d 1879 (Fed. Cir. 1996), where the Court stated that there was no specific requirement (such as 20% or 51%) that a certain percentage of potential consumers must have formed public identification. However, the court stated that there must be "more than a negligible portion of the relevant market." The Court further elaborated that the party attempting to prove priority rights based on use-analogous-to-trademark rights must have used its mark in a regular or recurring way so that consumers will be aware that the party offers the goods and/or services under the brand. The party trying to prevail in a priority dispute should submit evidence of advertising involving the mark and this promotional use should be directed at the target market. If the use is not public in nature, it may not support a claim of priority.
The critical part of the use is that it must impact the purchasing public. See Old Swiss House, Inc. v. Anheuser-Busch, Inc., 569 F.2d 1130, 196 USPQ 808 (CCPA 1978), where the Court held the evidence was insufficient because the twelve articles which appeared in newspapers and trade journals were merely press releases and the mark was buried in the body of the article and the only other use in the case was a speech at a shareholders' meeting. Thus, the purchasing public would not be significantly impacted. In another case, the evidence was also held to be insufficient where the mark was used in an investment brochure given to prospective investors rather than prospective purchasers. Selfway, Inc. v. Travelers Petroleum, Inc., 579 F.2d 75, 198 USPQ 271 (CCPA 1978). Moreover, infrequent and nominal sales of goods and/or services under the trademark will be insufficient to create priority rights.
Trade name use may provide a basis for opposition and cancellation under 2(d). However, before rights can attach, the name must be used in a public manner, creating an association between the name and the user's business with the goods and/or services of the business. The act of incorporation without additional use activity does not bestow rights in the name of the corporation. Use of the trade name similar to use-analogous-to- trademark use must be calculated to draw the attention of the relevant purchasing public. Examples of open use of this kind may occur on letterhead, envelopes, signage, purchase orders, invoices, literature, annual reports, statements, production orders, promotional material, advertising and brochures. Prior and continuous use as a trade name may be "tacked" onto subsequent trademark use to establish priority. Each priority dispute must be determined on a case-by-case basis. If you have questions concerning priority rights, please contact our office for a courtesy consultation.