Use Is the New Protectability

By Robert C. Cumbow

Academics, attorneys, and jurists all seem to be refocusing their thinking about trademarks in terms of the elusive concept of use. Recent discussions of trademark use have arisen in three key contexts: What sort of use is required to give rise to trademark ownership? What sort of use must a trademark owner make to be entitled to enjoin a junior user? What sort of use on the part of a defendant will give rise to liability? This article briefly examines each of these questions.

Use as a prerequisite for ownership. The notion of use is especially critical to trademark ownership in the United States, where trademark ownership rights arise from use, not from registration, as they do in many other countries. To give rise to ownership rights, it has generally been sufficient that a person or business adopt a mark and use it in connection with the promotion and sale of goods or services. Of course, it must be capable of function-ing as a mark and likely to be perceived as such by the relevant consumers. A generic term, no matter how much it is made to look like a brand, is by definition not capable of distinguishing its owner’s goods from those of competitors, who themselves have every right to use the same term in describing their own products. Similarly, a name that is merely a business name and is registered as such in the relevant jurisdiction does not automatically constitute a trademark unless used and recognized as a trademark.

The Lanham Act’s definition of "use in commerce" seeks to codify the kind of use that creates trademark recog-nition at common law and that will confer national protectability upon trademarks applied for federal registration. It is important to recognize that use as defined in the Lanham Act is a criterion for registration, not for enforcement. Registration is not required for ownership or enforcement of a trademark.

The Lanham Act cautions against token use made merely in order to reserve a mark. Use, though it may be small, must be substantial and made in good faith. The language then goes on to recite very specific activities required for a mark to be used on goods, as well as more general, fuzzier requirements for use of a mark with services. This dis-tinction has strong implications in the age of the Internet: Using a mark in connection with promoting your organiza-tion’s services on a website is generally sufficient to confer trademark rights, whereas using your mark on goods still requires physical attachment of the mark to the goods and transport of the goods in interstate commerce.

Use as a prerequisite for enforcement. Even where a party meets the requirements for ownership—and federal registration—of a trademark, it still may not obtain a remedy against an alleged infringer without showing a likeli-hood of confusion. Although all circuits have their own specific factor tests for determining whether a likelihood of confusion exists, chiefly emphasizing the similarities between the marks and between the parties’ respective goods or services, the question whether confusion is likely relates to the use that the plaintiff and the defendant have made of the respective marks.

The "Dawn Donut rule," arising from Dawn Donut Company, Inc. v. Hart’s Food Stores, Inc., 267 F.2d 358, 121 U.S.P.Q. 430 (2d Cir. 1959), holds that even a federally registered senior user vested with nationwide rights may be denied injunctive relief against a remote junior user if the plaintiff’s use of its mark has not made it sufficiently known in or near the defendant’s geographic territory so as to create a likelihood of confusion. As a result, in "Dawn Donut situations," trademark plaintiffs’ attorneys have tended to send warning letters rather than seek injunctions, and defendants’ attorneys have tended to tell trademark owners to take a hike and call back when they are ready to use the mark in the local area—which is often never.

Those who maintain that the Dawn Donut rule is in the twilight of its years cite several factors that arguably make geographic proximity irrelevant or only minimally important to a contemporary federal registrant’s ability to enforce.

  • Increased travel has made it extremely common for consumers to carry familiarity with even purely regional marks from one part of the country to another and often to make assumptions about affiliations based thereon.
  • National (and even global) advertising frequently makes consumers aware of remote brand names that they do not encounter in their own specific geographic markets.
  • Globally accessible websites promote even tiny brands to a virtually limitless audience.
  • Television’s growth from three national networks to a complex web of both general and specialized broadcast bands focusing on increasingly fragmented geographic and subject-matter markets has made local and re-gional brands capable of achieving national recognition.

    In light of this, is Dawn Donut ready for the trademark graveyard? A brief examination of the recent jurispru-dence reveals that, with respect to some types of commerce, the Dawn Donut rule is still applied as an absolute, while in other circumstances some courts regard it as only one of several factors to be considered in a balancing test and still other courts have soundly questioned and criticized the viability of the rule altogether.

    Use as a prerequisite for liability. The increasing inquiry into use creates a double burden for the trademark en-forcement plaintiff, who must not only show that his or her own use is sufficient to create enforceable rights and entitlement to a remedy, but also that the defendant’s use is one that should give rise to liability. Recent years have seen an increase in "nonuse" defenses. In an effort to avoid reaching likelihood of confusion analysis altogether, defendants are more inclined to claim that their use of the accused mark is not the kind of "use" intended to be ac-tionable under laws governing trademark infringement and dilution.

    In the Internet context, it is increasingly common to hear the defense that the accused mark was "not used as a trademark." The basis for this defense is questionable. The Lanham Act requires only use "in commerce" or "in connection with" goods or services offered in commerce. The "not used as a trademark" defense usually boils down to a "not used as my trademark" defense, and the outcome usually rests on the extent to which the accused mark was nevertheless a misuse.

    Similarly, defendants seldom claim that the mark was "not used as a mark," but often claim that it was "not used in commerce." By this, they usually mean "not used commercially," as opposed to "not used in commerce as de-fined in the Lanham Act." Such defendants mean to invoke the First Amendment, which is often found to protect actions that might otherwise be trademark infringement. It has become standard for courts to find noncommercial websites protected under the First Amendment, despite the fact that there is no "commercial use" requirement in the Lanham Act’s anti-cybersquatting provisions, only a showing of bad faith.

    - This article is an abridged and edited version of one that originally appeared on page 21 of Landslide, March/April 2009 (1:4).
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    Robert C. Cumbow is a shareholder at Graham & Dunn PC in Seattle, Washington. He may be reached at The author acknowledges, with gratitude, the assistance of Graham & Dunn summer associate Aimee Decker (University of Washington Law School, 2009) in preparing these materials.

    Copyright 2009

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