If a trademark registration at the USPTO is d on 44e and 66a, what kind of rights does the trademark owner have? If the owner of the mark is not using the mark, can the owner still enforce the mark in the USA? What is the use requirement?

SHORT ANSWER: 44e and 66a applicants generally have the same rights as 1a and 1b applicants. The main difference that 44e and 66a applicants do not need to show use for registrations. Generally, a 44e and 66a registrant cannot enforce their rights without showing some kind of use or that non-use is reasonable under the circumstances. Otherwise the use requirements are the same as any other US trademark registration owner.

Long Form Discussion:

Use Within a Reasonable Time in U.S.

That is, the protection is subject to a challenge by an interested party who could file a petition for cancellation for abandonment. The Trademark Board has made it quite clear that a section 66(a) registration of a mark that has never been used in the United States, or for which use has been discontinued with no intent to resume, is subject to cancellation for abandonment [7] “even if the international registration remains valid and subsisting.” The three-year period of nonuse that constitutes prima facie evidence of abandonment can begin no earlier than the day the § 66(a) registration was issued.[8]

Incontestability. Madrid Protocol extensions of protection in the United States are eligible for "incontestable" status under the same conditions as for registrations on the Principal Register.[9]

Vulnerability to Cancellation. Because U.S. extensions of protection have the same "effect and validity" as a registration on the Principal Register,[10] they are subject to cancellation proceedings before the T.T.A.B. and in court d on the usual grounds.[11] This vulnerability is expressly recognized in the Protocol.[12]

QUESTION 2: If a Person A applies for a trademark registration at the USPTO but has not used the mark yet (1b application) and Party B who is using the same mark in commerce and Party B files for a trademark registration after the first entity, who will get the registration?

SHORT ANSWER: If both applications are concurrently pending Party B will likely receive a rejection and have to wait until Party A’s mark is published to oppose Party A’s mark d on earlier use. If Party B files after Party A 's registration, then Party B will likely receive a rejection and have to file a cancellation of Party A’s mark. In both instances Party B will prevail due to prior use.

Long Form Discussion:

Apart from the statutory provision of a “constructive use,” it is not registration, but only actual use of a designation as a mark that creates rights and priority over others. Emphasizing the rule that it is use, not federal registration, that creates a legally enforceable “trademark,” the Supreme Court observed that: “Federal law does not create trademarks.”[13]

Most civil law nations follow the rule that ownership and priority of a trademark go to the party who was first to file an application or obtain a registration.[14] But in the United States, the rule of priority is that ownership and priority of a trademark go to the party who was first-to-use. The only exception is that since 1989, priority of use can be obtained by filing an application for federal registration, which, upon registration, confers a “constructive use” date of first use--

But that “constructive use” priority can always be defeated by another party's evidence of a prior actual use.

First-in-Time, First-in-Right.

The basic rule of trademark ownership in the United States is priority of use. For inherently distinctive marks, ownership goes to the first entity to use the designation as a mark. Because non-inherently distinctive marks require secondary meaning, ownership generally goes to the first entity to acquire secondary meaning. The United States Supreme Court first recognized the rule of priority governing trademark ownership in the 19th Century.[15] All common law and registration rights are built upon this foundation of first-in-time, first-in-right.[16]

“First-in-Time, First-in-Right” is an ancient rule of ownership, and can be traced back as far as the Justinian Code ordered by the Sixth Century Byzantine Emperor Justinian. For centuries the rule was rendered in Latin: “Qui prior est tempore, potior est jure.”[17]

This rule of first use has been applied to a wide range of ownership interests, including fisheries, water rights, valuable minerals, parking places and satellite orbits.[18] The “Forty-Niners” were the early prospectors and miners in the 19th Century California gold rush. In a time and place largely devoid of law and order, th eminers instinctively used the rule of first-in-time, first-in-right to allocate ownership of gold deposits and the water needed to mine them.[19] In everyday parlance, the rule of first-in-time, first-in-right is reflected in sayings such as “finders keepers” or “first come, first served.” In many Western societies, people waiting for something order themselves by forming a line in order of arrival: “Wait your turn, I was here first.” The alternative is either mob-like chaotic pushing and shoving or the law of the jungle, with the gun-toting claimants taking everything.

At common law, ownership of trademark or trade dress rights in the United States is obtained by actual use of a symbol to identify the goods or services of one seller and distinguish them from those offered by others. The way to obtain rights in a business symbolis to actually use it as a mark. “Under the principle of first in time equals first in right, priority ordinarily comes with earlier use of a mark in commerce.”[20]

To create trademark or trade dress rights, a designation must be proven to perform the job of identification: to identify one source and distinguish it from other sources. If it does not do this, then it is not protectable as a trademark, service mark, trade dress or any similar exclusive right. With each sale of goods or services under such a business symbol, the seller builds up greater and greater legal rights in that symbol. In the absence of customer recognition of the symbol, the “owner” of the business has no good will, and thus there is nothing for the “trademark” or “trade dress” to symbolize or represent. Of course, once valid trademark rights have been established, these rights can be soldor licensed to others if the good will symbolized by the mark is kept intact.

Tacking On Prior Versions.

Priority of use is acritical issue in many trademark disputes. The party who can prove it was first to use becomes the owner of a valuable trademark right. Falsifying or fabricating documents to create a false record of prior use can be a ground for dismissal of a case.[21]

FOR EXAMPLE:

The benefit of a constructive use priority is available for registrations d on both use-d and intent-to-use applications.[22]

Adversary proceedings before the Trademark Trial and Appeal Board (T.T.A.B.) involve challenges to the registration of a mark involving two private parties and hence are called “inter parties” cases. The T.T.A.B. Administrative Judges act as the administrative decision maker. There are three types of “inter partes” cases: (1) oppositions; (2) cancellations; and (3)concurrent use proceedings.[23]

Inter partes opposition and cancellation procedures bear a resemblance to procedures in a federal District Court civil case, but are governed by the T.T.A.B.'s own rules of procedure in the Code of Federal Regulations along with the Federal Rules of Civil Procedure as supplemented by the Trademark Board Manual of Procedure. Limited discovery is permitted. All trial testimony is taken in a manner resembling that of a deposition in a court proceeding and taken down in writing. There is no trial by oral testimony before a decision maker, as occurs in federal court cases. In almost all inter partes cases, pleadings, motions, briefs, evidence and testimony are filed electronically via the internet through the Electronic System for Trademark Trials and Appeals (ESTTA.).

Inter Partes cases concern only the status of federal registration of a mark and do not determine the ability to assert common lawrights in the mark. For example, in a cancellation proceeding, it is a registration that may be canceled, not common law rights in the mark itself.[24] Common-law ownership rests upon use, not upon registration. While a federal registration gives its owner very important legal rights and benefits, the registration does not create the trademark. The cancellation of a registration does not invalidate underlying common law rights in the trademark because those rights do not flow from federal registration.[25]

Eventhough inter partes proceedings relate only to the status of the challenged application or registration, it is possible that factual issues of validity and likelihood of confusion determined by the T.T.A.B. can form the basis for issue preclusion which will be binding on a court in later judicial proceedings over the status of the mark itself.[26]

An “opposition” against an application is filed within a defined window of time after an application has passed through the ex parte examination of the Examining Attorney and has been published for opposition. The opposer is in the position of a plaintiff and the applicant is in the position of a defendant. The opposer may rely upon an alleged legal defect or deficiency in the application. Usually, the opposer will assert one or more of the bars to registration listed in Lanham act § 2,15 U.S.C.A. § 1052. If the T.T.A.B. sustains the opposition, then the application does not mature into a registration. If the opposition is dismissed, the application proceeds to registration.

Cancellation.

Concurrent Use Proceedings.

特注：版权归作者及Bayramoglu Law Offices LLC 所有，转载请注明出处，侵权必究。

[3] Saddlesprings, Inc. v. MadCroc Brands, Inc., 104 U.S.P.Q.2d 1948, 1951, 2012 WL 5196161 (T.T.A.B.2012).

[5]Madrid Protocol registered marks must be used in the U.S. within a reasonable time after registration: Saddlesprings, Inc. v. Mad Croc Brands, Inc., 104 U.S.P.Q.2d 1948, 1951-1952, 2012 WL 5196161 (T.T.A.B. 2012) (A section 66(a) registration of a mark that has never been used in the United States, or for which use has been discontinued with no intent to resume, is subject to cancellation for abandonment “even if the international registration remains valid and subsisting.”); Dragon Bleu (SARL) v. VENM, LLC, 112U.S.P.Q.2d 1925, 1930, 2014 WL 7206399 (T.T.A.B. 2014) (“And like all registrants, a Section 66(a) registrant must use the registered mark in commerce in order to avoid abandonment of its registrations.”) Section § 44(a): Use of a mark registered under § 44(a) is required within a reasonable time or else the registration maybe cancelled.

[7] Saddlesprings,Inc. v. Mad Croc Brands, Inc., 104 U.S.P.Q.2d 1948, 1951, 2012 WL 5196161(T.T.A.B. 2012).

[9] Lanham Act § 73, 15 U.S.C.A. § 1141m

[11] Saddlesprings,Inc. v. Mad Croc Brands, Inc., 104 U.S.P.Q.2d 1948, 1951, 2012 WL 5196161(T.T.A.B. 2012) (A Madrid Protocol § 66(a) registration is subject to the same grounds for cancellation as any other type of U.S. registration.).

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[14]For example, Chinese trademark law maintains a “strict adherence to the first-to-file principle.” Ferrante, Strategies to Avoid Risks Related to Trademark Squatting in China, 107 Trademark Rptr 726, 730 (2017).

[16] See B & BHardware, Inc. v. Hargis Industries, Inc., 135 S. Ct. 1293, 1299, 1310, 191L. Ed. 2d 222, 113 U.S.P.Q.2d 2045 (2015) (“One who first uses a distinct mark in commerce thus acquires rights to that mark.” Citing treatise.); Hana Financial, Inc. v. Hana Bank, 135 S. Ct. 907, 909, 190 L. Ed. 2d 800, 113U.S.P.Q.2d 1365 (2015) (“Rights in a trademark are determined by the date of the mark's first use in commerce. The party who first uses a mark in commerceis said to have priority over other users.”).

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