# Trademark First Use



## SBM (Aug 2, 2013)

Hello all,
New member here. Question about trademarks as there seems to be some very knowledgeable people here. If someone opened an online store like at eBay with a store name, lets say June 1, but didn't actually have anything for sale, i.e. a product in the store (just a store shell basically) until sep 1, would sep 1 be the first use? If another company, without any knowledge of the first company, started selling July 1, would that company actually have the first use?

Thanks in advance for any insight.


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## kimura-mma (Jul 26, 2008)

You would need to get more info about the first store. Perhaps they didn't sell anything in that online store til Sept 1, but they could have used their mark in other ways... Made hang tags, labels, line sheets, etc. There are various ways for them to prove first use before Sept 1. Perhaps they didn't use the mark til then, but your example doesn't provide enough info to give a good answer.


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## SBM (Aug 2, 2013)

Thanks. 2 scenarios:

IF it was an empty storefront, just reserving the name with nothing else done?

What if their first use was one class, like a bag vs. 2nd company doing, say, tshirts?

Also, if 2nd company was awarded the mark and first company wanted to object after registration, they would have to prove to the USPTO that actually had a first use date prior to July 1, correct?


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## kimura-mma (Jul 26, 2008)

SBM said:


> IF it was an empty storefront, just reserving the name with nothing else done?


Then I would say the July 1 usage would be considered first use.



SBM said:


> What if their first use was one class, like a bag vs. 2nd company doing, say, tshirts?


I'm pretty sure a bag would be considered the same trademark class as t-shirts. So the bag would be considered first use over the t-shirt.



SBM said:


> Also, if 2nd company was awarded the mark and first company wanted to object after registration, they would have to prove to the USPTO that actually had a first use date prior to July 1, correct?


Correct.


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## GordonM (May 21, 2012)

Assuming federal registration, the date must show first commercial interstate use. Internal use (or "idling", trying to reserve it), or intrastate use only, don't qualify. The way to obtain rights to a mark is to use it commercially. In most cases, this means public exposure of the mark. 

An exception to first commercial use is a statement indicating your intent to use. I recall they give you three years from the filing, or otherwise it's considered dead, but nevertheless the trademark registration isn't actually awarded until you actually use the mark.


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## SBM (Aug 2, 2013)

Thanks Gordon. So would propping up an empty online storefront with a 'name' - be 'use' or 'idling', in your opinion? Basically something like eBay.com/mybrand .


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## GordonM (May 21, 2012)

Not legal advice, but if the mark challenged, it would provide no benefit at all, IMO.


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## SBM (Aug 2, 2013)

At what point would a hang tag or logo become associated with a word mark?

Lets say the aforementioned empty online store shell had a store name of 'my brand', opened June 1 to reserve/hold the name (much like grabbing a twitter user name or facebook page). In the meantime, the proprietor begins working on a design and comes up with a fancy triangle. This logo and subsequent hang tags are completed July 1. Neither has the word mark 'my brand'. When do those items become representative of 'my brand'? When they are published/put into the store?


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## kimura-mma (Jul 26, 2008)

It depends on what you are trying to accomplish by representing "your brand" with the logo and hangtag. You can use whatever logo you want, whenever you want, to represent your brand. But if you are trying to determine first use for trademark purposes, you will need to be a little more specific in what you want to prove.


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## SBM (Aug 2, 2013)

If someone created a hang tag/logo that did not use the desired word mark at all and did not put it on a product, in a store or on a commerce website until 3 months later, would it be correct that the original creation date would have no effect on first use of the word mark?


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## kimura-mma (Jul 26, 2008)

If the hangtag does not feature the wordmark, then the hangtag has nothing to do with the first use or trademark registration of the wordmark at all. The two are completely separate works.


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## SBM (Aug 2, 2013)

Thanks for all your replies.


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## GordonM (May 21, 2012)

I'm not sure what you're trying to do, but if you get (or plan to get) a trademark for XYZ Brand for t-shirts and other apparel, you actually have to sell t-shirts commercially in interstate commerce. You can print all the tags, stationery, and other crap you want, but until you sell t-shirts, the category scope for which the registration is valid for, you have no claim of prior use.

In case it's not been clear to you, trademarks follow very specific categories, which (except for well known marks) limit their applicability. Unless your marketed product is hangtags, what is or isn't on them is irrelevant.

The nature of your post #10 suggests to me you have a very specific legal question you need answered. Getting advice on forums like this one is not the way to go about it. Unless your question was merely out of curiosity, you really ought to seek the advice of an IP attorney qualified to practice in your state.

The above is not legal advice.


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## SBM (Aug 2, 2013)

Thanks Gordon. The mark that is going through the registration process is in use. I have filed in the necessary category. My questions were regarding what might constitute first use, especially by another party as I described. I thought I might pose them here while I wait on the process to move forward.

Thanks for your replies.


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## GordonM (May 21, 2012)

You don't mention what country you are in, but not all countries follow first to use rights. Some, like Canada, put priority on first to file. The US currently uses something of a hybrid system, allowing priority for either first to use or first to file, depending on circumstances; e.g., you can file first with an intent to use, and that can give you priority even if you are not yet actually using the mark. The nature of your mark matters. If it's descriptive as opposed to arbitrary or suggestive there are certain limitations in how the mark may be protected.

These and other things are what make consulting with an attorney imperative at this stage for you. IP law is among the most complex areas of practice, and there is no plain answer to anything.

The above is not legal advice.


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## SBM (Aug 2, 2013)

Ignoring the issue of which company above actually would win on first use, let's say company A was able to register the mark 'mybrand' with no opposition. Two hypothetical scenarios: 

Company A then sends Empty Storefront company a C&D letter. Empty co. complies, not wanting to fight. Would Empty Co have any claim, say a year later, if at that time Company A has gotten big?

Company A did not know of Empty Co. Empty Co becomes aware of Company A at some point but makes no claim against the registered mark. Company A continues to grow and more time passes, lets say a year or more. Company A makes big $$$ and now Empty Co makes a claim. Would the passage of time preclude that, based on Empty Co not taking any action prior?

Not seeking legal advice, just thoughts from anyone. Thanks.


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## kimura-mma (Jul 26, 2008)

The World Wrestling Federation used the "WWF" mark for over 20 years. There were probably millions of merchandise items sold using that mark, from t-shirts to action figures to lunch boxes to bed sheets. One day, the World Wide Fund decided to take action claiming they used the mark first. They proved it in court and won. The wrestling company is now known as World Wrestling Entertainment (WWE).

So to answer your questions... if someone uses a mark first - and can properly prove it in court - they can take action at any time against infringement. It all depends on when the marks are used, how they are used and what exactly can be proven in court.


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## SBM (Aug 2, 2013)

Thanks. But don't you have to defend your mark? If the wrestling group (and I have no knowledge on this) in their infancy had notified the wildlife people to cease and desist and the wildlife people chose either to do so OR did not take action to defend the mark once notified, aren't they in effect abandoning it by not defending it?


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## kimura-mma (Jul 26, 2008)

The wildlife fund did not have a registered trademark at the time. So there was nothing for them to defend (or abandon). The wrestling company probably did their due diligence but no conflicting marks came up in searches. Even if they were familiar that the wildlife fund existed without a registered trademark, they probably figured the two companies would never be confused for one another. It wasn't until the wildlife fund attempted to register their trademark that the issue came up. Both sides plead their case and the wildlife fund proved first use. I don't believe any damages were involved, just the rights to the WWF trademark.


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## SBM (Aug 2, 2013)

If WWF did know about wildlife and said stop using this and wildlife said ok and stopped (or changed their name) could they have come back later and said, we didn't mean it, now we want to register? Or maybe if WWF threatened to sue since WWF had the registration (and lots of money) and wildlife decided it wasn't worth the money or hassle and responded they will stop, would that affect first use? Assuming wildlife had and could prove first use (which they did) can first use ever be abandoned?


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## kimura-mma (Jul 26, 2008)

I guess we're back to hypotheticals, because I don't know what each side were thinking 25 years ago.

First use is very powerful, especially if it can be proven. So I doubt anyone would abandon it. But if they did, the person getting the rights to the mark would probably want to get it in writing. If there is an agreement in place, it is binding. If not, then there's always the chance that first use can come into play.


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## SBM (Aug 2, 2013)

Yes, hypotheticals. Thanks for your responses. If a registered mark owner asked a company like EBay to remove an item or store, would ebay take action based on the registration and let the parties fight it out if there were other issues like first use?


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## kimura-mma (Jul 26, 2008)

I would imagine so.


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## platnumcn (Aug 5, 2013)

I feel that it is a situation, which helps barely and even if it does, you should take proper legal help, as they would know what are your rights in your country.


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