Trademarks Class 4

1. Trademarks Class 4 Federal registration and geographic scope International use and domestic rights

2. Dawn Donut Co. 2

3. Dawn Donut v. Hart’s Food Stores “[T]he fact that [Hart] employed the mark ‘Dawn,’ without actual knowledge of [Dawn Donut’s] registration, at the retail level in a limited geographical area of New York state before [Dawn] used the mark in that market, does not entitle it either to exclude [Dawn] from using the mark in that area or to use the mark concurrently once [Dawn] licenses the mark or otherwise exploits it in connection with retail sales in the area.” [93]

4. Dawn might get injunction in future “The decisive question then is whether plaintiff’s use of the mark ‘Dawn’ at the retail level is likely to be confined to its current area of use or whether in the normal course of its business, it is likely to expand the retail use of the mark into defendant’s trading area. . . [T]he plaintiff may later, upon a proper showing of an intent to use the mark at the retail level in defendant’s market area, be entitled to enjoin defendant’s use of the mark.” [94-95]

5. The basic fact patterns Pure junior user (as in Dawn Donut): • S begins use • S registers mark • J begins use Junior intermediate user: • S begins use • J begins use • S registers mark Senior unregistered user: • S begins use • J begins use • J registers mark

6. Burger King v. Hoots • 1953: BK’s first use of the mark, in the south • 1957: Hoots began using the mark in Mattooon, Illinois, without notice of BK’s use • 1961: BK began using the mark in elsewhere in Illinois, and obtained a federal registration, now incontestable

7. Compare Dawn Donuts to Burger King • Dawn Donuts begins use • Dawn Donuts registers mark • Hart Foods begins use • BK begins use • Hoots begins use • BK registers mark

8. Person’s v. Christman • 1977: Person’s first use of PERSON’S in Japan • Apr. 1982:Christman’s first use of PERSON’S in commerce in the U.S. • Nov. 1982: Person’s first use of PERSON’S in commerce in the U.S.

9. Effect of foreign use “. . . Person’s Co. relies on its use of the mark in Japan in an attempt to support its claim for priority in the United States. Such foreign use has no effect on U.S. commerce and cannot form the basis for a holding that appellant has priority here” [115]

10. Bad faith could defeat senior user “Knowledge of a foreign use does not preclude good faith adoption and use in the United States. While there is some case law supporting a finding of bad faith where (1) the foreign mark is famous here or (2) the use is a nominal one made solely to block the prior foreign user’s planned expansion into the United States, as the Board correctly found, neither of these circumstances is present in this case.” [116-17]

11. Madrid Protocol • Applicant files an international application with home trademark office (based on domestic application or registration) • International application is forwarded to WIPO, which issues an international registration • WIPO notifies each designated country of the application • Each country considers the application under national law

12. Madrid Protocol (cont’d) • If a country doesn’t reject the application within 12 months (or 18 months), the mark gains national protection • If registration in home country is invalidated within 5 years, international registration is nullified • Initial term is 10 years, with 10-year renewals