Use: 1(a), actual use; ITU 1(b)—priority date is filing
date, while use is required for registration.
Basis: interstate commerce clause.
Paris: 44(d)—priority date is foreign filing date; 44(e) priority date
is US filing date; no use required until 5/6 year. Basis: treaty obligation. Madrid, §66, priority date is filing date of
international application unless Paris priority is claimed. No use requirement
until 5/6 year. Basis: treaty
obligation.
1870 and 1876 Acts had ITU provisions, part of what was
struck down in the Trademark Cases. 1953,
ex parte British Insulated Callender’s Cables: Paris Convention: we interpreted
it to mean that use in commerce couldn’t be required, but national treatment
gets confusing. If we treat foreigners
and Americans equally, failing to require allegations of use in commerce treats
foreigners better. Came up with crazy
fiction that foreigners have to allege use somewhere,
even if not in US, because of the nature of a TM (a symbol that is used to
distinguish goods/services). Thus we can
require specimens of use and mode of use, even if not use in commerce. But you use the specimens to show use in
commerce! 1955: changed our mind, no use required by foreigners under the
treaty. 1963: another flip flop. And then another.
So what does national treatment require? Commentators involved in Paris negotiations
insisted that national treatment means that you have to require use of foreigners, because that’s equal
treatment. Other interpretations did
violence to the nature of a mark.
US and 13 other countries signed the Trademark Registration
Treaty in 1973, but it blew up at home.
It would have allowed US intent to use as well as foreign nationals;
cancellation for nonuse couldn’t commence for three years after, though damages
would be limited. Died because of US
industry opposition.
SCM v. Langis, DC Cir. 1976: when you have 44(d)
priority—application in Canada for Lemon Tree mark, filed in US claiming
Canadian filing date—do you need specimens of use? Didn’t have them in Canada
or in US. What does 44(d)
grant—constructive use date or constructive filing date that could be defeated
by use? US company had used mark between
foreign filing date and US filing date.
Usually, actual use would defeat filing date—but DC Circuit said
no. Actual use can’t defeat the foreign
filing date. Thus, you end with the
conclusion that use isn’t required at all for §44 applicants.
At that point, US businesses quickly recognize the
inequality of the use requirements for registration, and ITU for US applicants
gets off the ground. Waiting to file
until you have use is really constraining.
First US owners came up with the idea of “token” use to let them file
applications. No one was really happy
with that, but we did it anyway to defeat the unfairness. But foreigners were
allowed registration without use, and that finally tipped industry into accepting
ITUs. Were still wary/concerned about
warehousing, impoverishing language, need to file oppositions to discourage
pursuit of contested marks—Cotton suggests that these feared consequences,
including more litigation, did in fact arise.
Attempts to eliminate warehousing/deadwood by limiting registration term
to 10 years instead of 20, other limits.
American use system has three drivers: constitutional
jurisdiction; nature of a mark; policy goal of eliminating deadwood. Global TM
system demanded a middle ground/bridge between systems; ITU appeared to be that
middle ground. But the specificity of the ID of goods/services is fundamental
to figuring out whether there’s a bona fide intent. Bona fide intent must be challengeable to be
real/meaningful; specific IDs allow objective measurement of business
plans/ability to launch these goods/services.
So ITU can’t be in a vacuum. We
get criticized for specificity requirements, but they’re a feature of our
history.
Roundtable discussion (including discussion of stuff I
missed earlier while teaching):
Graeme Dinwoodie, Oxford University
Use/registration isn’t a binary when it comes to
deadwood. TRIPS: you can have a modified
use-based system, and a modified registration system, but nobody is pure any
more.
Defense of European system: private actors must be alert and
defend their own interests, not rely on the TM authority. Philosophy of European system frames what’s
considered a worthy reform. At CTM level, attempt to create a new market
reality with a single market—arguably pushes Euro. system to be even more
cavalier about use, in the name of free movement.
Reforms considered/rejected to reduce clutter in EU: OHIM
doesn’t require intent to use for a CTM or ETM.
UK Office may be enforcing ITU through bad faith ground for denying
registration, even if there’s no separate ITU ground. Another possibility: require affidavit of use
for renewal. This was also rejected as inconsistent with international
trends—vehement language. Another
option: reduce grace period before abandoment from 5 years to 3. Also rejected, opposed by TM bar. Max Planck study: concluded that only small
percentage of registered marks are unused; he thought that this number was
unrealistically low and their methods of calculation are a bit dodgy (Google
searches).
Deadwood problem isn’t simply a function of how many marks
are on the register. Clutter is also a
function of size of each mark.
Do you have to use the mark in all countries? If you don’t you’re effectively imposing
deadwood on the rest of the countries.
Recent ECJ decision: it might be enough in one context but not in
others. If you push marks to CTM level and not national level, you create many
problems of scope. Deadwood concern might justify demanding standard at
European level and less at the national level. This also relates to free
movement of goods/creation of unified market.
From that perspective, we want to encourage CTMs. Ave. # of classes applied for in Europe is
one class bigger than in Europe.
Restricting that would restrict size of deadwood.
Biggest mistake in last 10/20 years in European TM was move
to prohibit national offices from engaging in ex officio relative
registrability inquiries. Deadwood isn’t
a problem if marks are valid. A series of invalid/unused marks is a problem,
and relative grounds for refusal is a good way of dealing with that but Europe’s
moving to probhibit it.
Barton Beebe, NYU School of Law
Partial to US tradition/nature of mark as giving us a use
requirement. Trademark is part of the broader law of unfair competition. But we do give nationwide priority from local
use upon registration. This creates a
hybrid system, and some of the same problems as in Europe—rights in distant
territories without use, subject to Dawn
Donut principle limiting injunctive relief until registrant is likely to
enter the market. Cotton’s presentation gives him new respect for Dawn Donut.
Stuart Graham, Georgia Tech and USPTO
Discussed massive TM dataset now available, showing
significant shifts in behavior post-ITU.
Dinwoodie: maybe enhanced fee shifting would produce better
results than substantive changes.
Cotton: fees are really hard to get out of TTAB—slows things
down a lot.
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