The Brevard Technical Journal

Trademarks Again
BY Joel I. Rosenblatt

Mr. Rosenblatt, a Registered Patent Attorney with the U.S. Patent and Trademark Office, practices in the e commercial law of technology and the Internet and the law of patents, trademarks, and copyrights. He is a Florida Supreme Court Certified Mediator, a Florida Bar Certified Approved Mediator for Computer Law Disputes, and is admitted to the Northern, Middle, and Southern, U.S. District Courts for Florida. Any questions or comments may be directed to Mr. Rosenblatt at (321) 727-7626; FAX: (321) 821-1922 or by email to jirosenblatt@earthlink.net Past articles may be viewed at http://www.joelirosenblatt.com

In the event anyone asks why the above copyright notice, it's what my publisher wants, and as the refrain goes: “What my publisher wants, my publisher gets.” But aside from the unfathomable demands of my publisher, there happens to be an interesting inverse parallel between copyright and trademarks. They are not just different versions of intangible property. At one time, copyright could exist in common law and as a statutory right. The common law rights existed only as long as the work was not published, meaning “generally available without restriction to the public.” Once publication was made, everywhere the work went, a copyright notice had to go with it. Something like Mary and her little lamb. Now, however, there is only statutory copyright. It arises at the moment a work is fixed (for example, on a printed page, or on video tape or a DVD disk) and a copyright registration is now necessary only when suing an infringer. However, it is recommended to prevent any particularly malicious plagiarist from claiming the undeserved benefits of innocent infringement.

Trademarks, on the other hand, may be common law or statutory and each may exist as actually in fact concurrent, but not competing marks. It's an interesting Congressional accommodation for goods and services already in commerce to protect the rights of the innocent. But it’s more than that. It's Congress' way of maintaining commercial stability by protecting the public right to keep the brands they know. Legally it's called concurrent use and can be found in the U.S. Trademark law.

An example would be local service company doing business, and marketing in a definite geographic area. Let's say within the Orlando metropolitan area. As irregular as that area may be, a record of doing business in that area secures a common law right for local service company to use, and to continue to use, their service mark in that area.

While rights may be argued, for example, for areas where the services were marketed, but to date no services sold, it could be said no rights in the marketed but yet unsold areas were established. However, lawyers like nuances, and here's one readily available in the restaurant business: A restaurant located in the Orlando area but advertising in, and drawing customers from Kissimmee or Winter Park would be entitled to include Kissimmee and Winter Park in its service mark area. But there are limits, and I suggest it may come from the federal law of trademarks that the definition of a service mark is “where the services were rendered.” While I can see a customer driving in from Winter Park, it would take a really distinctive restaurant to draw from Tampa or Clearwater.

It would appear then that restaurants being a place where customers go, rather than where the service is taken to the customer, as in plumbing or real estate services, is the area where the restaurant can show it draws customers “where the services are rendered.”

A fair conclusion from all of this is where the service mark was used and services provided with the mark. There is no doubt that common law rights for the local service company were established and will not be disturbed as long as the local service company continues to use the mark “continuously for the same or similar services.”

Now comes another provider of the same services, which has a trademark attorney recommending an application to the U.S. Patent & Trademark Office for a service mark registration on the Principal Register. Why bother with the expense, asks our another provider? Because, says the trademark attorney, you will immediately have constructive use of the mark everywhere the U.S. trademark laws apply and, should a service mark registration on the principal register be granted, you will have rights over every one except innocent users who can demonstrate by a preponderance of evidence, the mark was in use and common law rights acquired, prior to a) use of the mark by you the another provider, in an overlapping business area or b) prior to you, another provider's U.S. application filing date.

What that means is if the local service company was able to show use in the local service area before the another provider filed an application for registration on the U.S. Patent and Trademark Office Principal Register, then the local service company can claim a right to concurrent use of the same service mark, within the local service company service area but definitely not beyond.

What all this means is that in some cases, a federal trademark or service mark registration, will exist coequally with a common law mark in whatever geographic area that common law mark may have been established. However, filing an application at the U.S. Patent and Trademark Office immediately establishes constructive use and is sufficient to legally prevent the creation of all or any common law rights, after the application filing date.

At this point, we have our local service company, with its service mark established for its local service area, with a common law right to use that mark in that local area, even if the another provider should be granted a U.S. Registration. But that case applies only where the local service company use was innocent before the same use in the same local area by another provider or before constructive use by another provider's U.S Patent and Trademark Office Application.

The reason given for this answer must have a logic connected to origins of the common law right, which arises from an innocent use of a mark, prior to local use of the mark or the date of a federal application for the mark, by the eventual owner of a federal registration. The equities appear clear. The federal registrant should not be allowed to retroactively apply the federally registered mark to the innocent user because that would reward a delay in filing the application or delay use in the local service company business area and could be argued as an entrapment.

But what if the local service company has a state registration for the State of Florida? Leaving, as the only unresolved issue, any conflict between as state registration and a federal registration. The question then is does the State service mark registration extend the local service company's actual common law area of use from Key West to the Georgia and Alabama, borders?

State registrations arise from states' rights over intrastate commerce. Federal registrations arise from the Supremacy Clause of the Constitution and the exclusive right of Congress to legislate for commerce between the states, international commerce and with the Indian Tribes. The answer, from the Supremacy Clause is any conflict must be resolved in favor of the federal registration. But how far should that federal supremacy extend? In terms of our example, where our local service provider operates in the Orlando area but has a Florida State registration, should that state registration be effective to cover the whole State?

I don't think so, and Oliver Wendell Holmes agrees (or perhaps it’s the other way forward). The answer is no because the effective scope of the federal registration is everywhere a common law right does not exist and by grace of federal statue, is concurrent with legally adequate state common law rights but not beyond.
The other reason our trademark attorney gave for filing the U.S. Patent and Trademark Application is to advance the cause, and protect the business of his client. Whatever were you thinking?