X’s area of use is frozen as of the time that Y applied for federal registration. Congress amended the Lanham Act in 1988 to permit “Intent-to-Use” (ITU) registration application for those who have not yet made a substantial interstate use of a mark but intend to do so in the reasonably near future. In an ITU application, the owner of a mark must declare that it has “good faith intent” (“bona fide intent”) to use the mark at a future date. Assuming that there is no other obstacle to registration, the owner may then obtain a regular registration if there is a substantial interstate use of the mark within six months, a period which can be automatically extended to one year. There can be a further extension to two years upon proof of continuing good faith efforts to make a substantial interstate use, and even to three years upon such further proof. If the owner of the mark does not make a substantial interstate use within the designated time, it may file a regular registration application. The important thing about an ITU application is that, if first to register, the “priority” date is the date on which the ITU was filed rather than the date on which the regular application was filed.
If there was no previous ITU, but only a regular application, the priority date is the date on which the regular application was filed. Whenever registration is achieved, the term of registration is ten years from the time the mark was actually registered and may be renewed in ten-year increments by registrants who show that they are still genuinely using the mark. Likelihood of Confusion In most infringement actions, the plaintiff mark owner has the burden of proving that the defendant’s mark is so similar to the plaintiff’s that the defendant’s use will produce a LIKELIHOOD of CONFUSION in buyers’ minds as to the true origin of the goods or services. Even if the evidence does not prove that the defendant’s use of the same or a confusingly similar mark is likely to cause customer confusion as to actual source, there may still be trademark infringement if the evidence shows that consumers are likely to be confused about affiliation, sponsorship, or endorsement—that is, they are likely to be misled into believing that the plaintiff is associated with defendant or sponsors what the defendant is doing. Whether such likelihood exists is a question of fact in any particular case and is determined by such factors as; 1. Similarity of design of the marks 2. Similarity of product 3. Proof of confusion among actual buyers 4. Marketing surveys of prospective purchasers showing an appreciable misassociation of the defendant’s mark with the plaintiff’s product. On the basis of these factors, for example, Rotary DeRooting was held to be a mark so similar to Roto-Rooter that the owner or Roto-Rooter was successful in recovering damages from the owner of Rotary DeRooting. ROTO-ROOTER CORP. v. O’NEAL. 513 F.2d 44 (5 th Cir.
- Spring '08
- Trademark law, trademark infringement