Friday, January 21, 2011

Who Wants this Pro Bono?

Free baos till november if someone wants to hold me down..... a royal frush a week for real


  1. Mr. Huang:

    I would like to help you with this, pro bao-no.
    Could you send me an email? I think I see a pretty obvious counter-argument to their position.


    (noob lawyer)

  2. Or... you could just grow up and realize you're not the only one with a right to use an obvious pun.

  3. Not a lawyer yet, but I think this should be of help:

    [d] Need for Actual Use in Establishing Priority. To establish actual, as opposed to constructive, priority rights it is necessary to make actual use of the mark on the goods or in association with the services. 10 Mere invention, creation, or discussion of a trademark does not create priority rights, 11 nor does mere sham or token use made for purposes of reserving rights for later use. 12 Similarly, forming a corporation does not, without more, create any priority rights in the particular name. 13 There must be actual use in trade in connection with a going business before protectible rights attach.

    It is well-established, however, that a party can show prior use of a mark without an actual sale of goods carrying the mark. If a party adopts a mark and promotes and advertises its product or service in a way sufficiently public to identify or distinguish the marked goods, the party may acquire rights superior to those of one who was first to make actual sales.

    Support: Harod v. Sage Prods., Inc., 188 F. Supp. 2d 1369, 1376, 62 U.S.P.Q.2d 1022 (S.D. Ga. 2002) (shipping product samples to customers can establish prior use if the public began to associate the mark with defendant's product); S Indus., Inc. v. Stone Age Equip., Inc., 12 F. Supp. 2d 796, 49 U.S.P.Q.2d 1071 (N.D. Ill. 1998) (finding advertising did show use because it reached a substantial portion of the relevant purchasing public and was repetitive); Maryland Stadium Authority v. Becker, 25 U.S.P.Q.2d 1469 (D. Md. 1992) (priority based on pre-opening stadium advertising and promotion); Novel ID v. Hyman Prods Inc., 11 U.S.P.Q.2d 1138 (C.D. Cal. 1989) (use on promotional displays sufficient).

    Use on a direct mail solicitation in advance of publication was held to be use on displays associated with the goods, and sufficient to establish priority rights in a magazine title. New West Corp. v. NYM Co. of Cal., 595 F.2d 1194, 202 U.S.P.Q. 643 (9th Cir. 1979) . The court relied heavily on George Washington Mint, Inc. v. Washington Mint, Inc., 349 F. Supp. 255, 176 U.S.P.Q. 251 (S.D.N.Y. 1972) , for the proposition that priority rights may be established prior to actual sale of a product with the mark affixed. See also Walt Disney Productions v. Kusan, Inc., 204 U.S.P.Q. 284 (C.D. Cal. 1979) .

  4. Sorry to take up all of this space in the comments again, but this is particularly relevant and very helpful for your case I believe (once again, not a lawyer yet ;)):

    Purely intrastate use does not provide a basis for federal registration. However, if intrastate use directly affects a type of commerce that Congress may regulate, this constitutes use in commerce within the meaning of the Act. See Larry Harmon Pictures Corp. v. Williams Restaurant Corp., 929 F.2d 662, 18 USPQ2d 1292 (Fed. Cir. 1991) , cert. denied 502 U.S. 823 (1991) (mark used to identify restaurant services rendered at a single-location restaurant serving interstate travelers is in "use in commerce"); In re Silenus Wines, Inc., 557 F.2d 806, 194 USPQ 261 (C.C.P.A. 1977) (intrastate sale of imported wines by importer constitutes "use in commerce," where goods bearing labels supplied by applicant were shipped to applicant in United States); In re Gastown, Inc., 326 F.2d 780, 140 USPQ 216 (C.C.P.A. 1964) (automotive service station located in one state was rendering services "in commerce" because services were available to customers travelling interstate on federal highways); U.S. Shoe Corp. v. J. Riggs West, Inc., 221 USPQ 1020, 1022 (TTAB 1984) (billiard parlor services satisfy the "use in commerce" requirements, where the record showed that applicant's billiard parlor services were advertised in both Kansas and New York); In re G.J. Sherrard Co., 150 USPQ 311 (TTAB 1966) (hotel located in only one state has valid use of its service mark in commerce because it has out-of-state guests, has offices in many states, and advertises in national magazines); In re Federated Department Stores, Inc., 137 USPQ 670 (TTAB 1963) (mark used to identify retail department store services located in one state was in use in commerce, where the mark was used on credit cards issued to out-of-state residents, and on catalogs and advertisements shipped to out-of-state customers).

    In some cases, services such as restaurant and hotel services have been deemed to be rendered in commerce because they are activities that have been found to be within the scope of the 1964 Civil Rights Act, which, like the Trademark Act, is predicated on the commerce clause. See In re Ponderosa Motor Inns, Inc., 156 USPQ 474 (TTAB 1968) ; In re Smith Oil Corp., 156 USPQ 62 (TTAB 1967) .

  5. Don't think you have much of case but a pro-bono attorney will help you bargain a favorable co-existence agreement. -IP Attorney