Going to the well (i.e., other people’s blogs) again, and what better well than Duets Blog and Steve Baird? In a post a while ago Steve addressed an important topic regarding which there’s a lot of, er, confusion. And I’ll admit I was still a bit confused after I read it, being a little weak on the subject, so as you see I asked and received and — well, ok, one step at a time:
The trademark clearance process can be particularly difficult to navigate, given the ever increasing crowdedness of the marketplace, our rapidly shrinking world, and the ease of trademark filings.
Necessary and appropriate preliminary and comprehensive trademark clearance searches represent imperfect snap shots of the trademark legal landscape at a particular point in time.What many fail to appreciate is how quickly an open window of trademark availability promptly can be closed by the simple third party filing of a conflicting intent-to-use trademark application.
A best practice to keep in mind during the trademark clearance process is the importance of promptly filing an appropriate intent-to-use trademark application immediately after receiving the results of a successful clearance opinion; doing so maximizes the value of the investment in the search and minimizes the risk of intervening and conflicting third party trademark rights. . . .
Have you ever been burned, not taking seriously the certainty of how time is of the essence when it comes to trademark priority?
This struck me as a couple of startling assertions. If the mark clears for use, it’s unconditionally a “best practice” to run and get and file an ITU — which establishes priority?
I could immediately think of a few reasons why it might not be a very good practice at all do that. But before slipping into that gear, I thought I’d ask Steve what he meant by saying that an ITU “establishes trademark priority.” Steve explained as follows: