Executive Intellectual Property Bulletin

Intent to Use Applicants Regain Legislatively Intended Right of National Priority on Appeal

Can someone who uses a mark only after you file an intent-to -use application obtain common law rights which can then be used to prevent you from using the mark? Recently, the Southern District of New York held that an intent-to-use applicant, before actual registration of the mark, has no offensive or defensive enforceable trademark rights against a prior user of a confusingly similar mark. THIS DECISION WAS RECENTLY REVERSED.

The lower court decision would have undermined the purpose in having intent-to-use applications, including encouraging early filing and thus public disclosure of marks and promoting certainty in the trademark system. Judge Baer Jr. found the statutory text to be unambiguous. Priority rights of constructive use are "contingent on the registration of the mark." Judge Baer, in the lower court, declined to follow the lead of the Trademark Trial and Appeal Board (TTAB) in its interpretation to permit intent-to-use applicants to make defensive use of their application in opposition proceedings before the TTAB.

*WarnerVision Entertainment v. Empire of Carolina Inc., et al., 919 F. Supp. 717, 38 U.S.P.Q. 2d 1417 (1996).

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