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.

Unlikely to be Confused.
Best Practitioner.

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:

Hi Ron, thanks for dropping by. Short answer to your specific question, it doesn’t. And, sorry if my post was confusing on that point, but I never said anything about use, perhaps that’s your point. Both points I made about ITU applications assumed that the applications were bona fide and that use in commerce would eventually and timely be made of record so that the filing date of the ITU would become the nationwide priority date. I’ll add, if I were a brand owner, wanting to invest in a mark to build a brand and I did the requisite clearance, saw the path looked clear, but I nevertheless delayed in filing my own ITU (against my better judgment, of course), to then find later that another beat me to the punch by filing a conflicting ITU application, I wouldn’t want to live in uncertain limbo for up to four years watching the status of that prior ITU wondering if it would ever become abandoned to re-clear a path for me, I’d go back to the drawing board. Make sense now?

I suppose so, indeed.  I think Steve’s point is that, yes: If the field is clear for use of the mark, and registration is in the cards anyway for all the reasons, why not get the ball rolling and avoid problems?  In fact, Steve ends the post by asking:

While we can’t be certain that others are thinking along the same branding and trademark lines as our clients at roughly the same time, we can be certain that priority determines trademark rights, and a day can make the difference, sadly I’ve seen it happen.

Perhaps the silver lining in the kind of trademark uncertainty we face as marketing and trademark types is that we’re not talking life and death, we’re talking about going back to the drawing board.

And, sometimes going back to the drawing board even more than a few times can yield a much better and more effective name anyway.

Do you have any scars to show for your trademark clearance activities?

Facade, Carnegie Hall
Practice, practice, practice.

I can answer a definitive, “Yes.”  Clients, or prospective clients, have come to me with situations where they have priority of local use — a good example is a restaurant, which rarely has bona fide interstate commerce — and after achieving some success have looked into the possibility of registering their marks, only to find a competitor has gotten there first.  Now the slow-footed cook’s goose is cooked, because although as the first user he can still maintain his use in his own territory, the registrant has, by virtue of registration, priority everywhere else in the United States.  That can be quite a potential blow to business expansion plans that include the mark you’ve built up in your little hole in the wall.

In one recent situation I encountered, a restaurant owner was all but certain that the owner of the registration whose mark was very much like his had been unduly “inspired” by his own restaurant.  The person who contacted me did not operate across state lines, and it seemed unlikely that the registrant did either — though the latter would have had to claim to have done so in order to get the registration.

My prospective client, however, was looking into getting a registration because he was ready to consider merchandising products related to his local, well-known eatery, and these certainly would be sold in other states.  Now his expansion plans seemed blocked.

He had a few options, which I won’t discuss here.  They were not necessarily inexpensive, and they carried varying degrees of risk. The point is — as Steve says — if there had been any thought in this fellow’s mind that some day he might want to register his mark, he could have saved himself the aggravation, and a lot of expense, by the relative expedient of filing an ITU before the copycat did so. (It should go without saying of course that he should have filed once he was actually using the mark, given these circumstances.)

Now, this is all well and good, advice of course, in hindsight, because now we know that the restaurant owner had, in fact:

  • done the clearance work — not so cheap, by the way, and while this is a huge topic for another time, what exactly is your trademark counsel giving you for trademark “clearance”?
  • truly settled on the mark or marks;
  • could justify spending money on trademark registrations when, after all, priority is REALLY established by use;
  • has some interstate commerce planned!

If so, we have a valid riposte to this evergreen post in which I have warned forever against the inclination to register, register, register every trademark all the time, to wit:

 [S]pending energy and money on trademarks early on in the startup cycle is almost always a mistake.  I can’t say it enough:

For well over nine out of ten new businesses, the odds of an idea sinking or swimming on the strength of a trademark are slim indeed, and slim too is the war chest most entrepreneurs bring to the battle of free enterprise. Better to have a business plan, a product or service that people want, the ability to deliver it and to scale it up, the capitalization to fertilize all that and to pray that Providence smile on your efforts. If in the process you develop something worth protecting as a trademark, that mark has already been storing up goodwill and secondary meaning and is enforceable as against infringers under state law and Section 43(a) of the Lanham Act. If it would be a good, business-justifiable use of what is still early-stage capital to register your trademark at this point, by all means do it.

And not a minute before. . . .

Trade identities… brands… marketing approaches… target markets… graphic identities… product configurations… these things frequently change early in the entrepreneurial cycle. What a mistake it would be to spend money on a trademark registration for a trademark that becomes irrelevant, or potentially even a marketing or legal burden, when final configuration of a brand identity and its associated trademarks have matured and no longer look like their high school yearbook pictures — the pimply-faced versions you “trademarked.”

So, we learn.  And we grow. So do our businesses — and our “trademarking” strageties. Thanks, as ever, Steve, for helping me do so!


By Ron Coleman

I write this blog.

2 thoughts on “The best of intentions”
  1. Hi Ron:

    In a blog post about other confusing blog posts, you make a statement regarding interstate commerce and restaurants that…well…seems a little confused.

    Many restaurants with a single location in only one state can meet the requirement of use in interstate commerce, simply by serving guests from out of state. There doesn’t need to be intent to operate across state lines.

    I suppose this is one of the reasons why restaurants typify the quintessential concurrent registration scenario.

    Here’s a excerpt from TMEP Section 901.03
    Purely intrastate use does not provide a basis for federal registration. However, if intrastate use directly affects a type of commerce that Congress may regulate, this constitutes use in commerce within the meaning of the Act. See Larry Harmon Pictures Corp. v. Williams Rest. Corp., 929 F.2d 662, 18 USPQ2d 1292 (Fed. Cir. 1991) (mark used to identify restaurant services rendered at a single-location restaurant serving interstate travelers is in “use in commerce”)…

    1. Great clarification, Michael, and thank you. It’s not so black and white, though, and I commend this blog post by Eric Waltmire for an excellent elucidation of the issue, which was not the main point of my post, though I wish it had been. I owe both of you a debt of gratitude for furthering my understanding of this issue!

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