Getting to “Use”

By Dan McPheeters and Michael Stein


In our earlier post, we discussed the ambiguities surrounding the determination of whether or not a mark had been used in commerce sufficiently for federal trademark protection to accrue. The case-law revealed strong support for an “analogous use” doctrine that falls somewhere below actual sales, though how much lower is ambiguous and will certainly require litigation to confirm. If only there existed some resource, something up to date and freely accessible to all, where one could turn for help navigating these deep and existential questions…

The analogous use doctrine vests rights in a mark when the marketing and promotion of the product or service with which the mark is associated rise to the level of communicating a bona fide intention for “continuous commercial utilization” of the product. Examples cited approvingly by Courts range from Marvel Comics’ distribution of 430,000 fliers with the title of a new comic book to the creation of a webpage that was “universally available,” “place[d] the mark in the public domain,” and attached the mark to Plaintiff’s product “in a readily accessible manner.” The focus will not necessarily be on the number of persons who are actually touched by the marketing scheme, but rather the nature of the marketing scheme such that the mark and its connection to a product or service is readily accessible to the public.

This is all well and good, but begs the question: By what standard can a non-sale be evaluated in order to determine whether or not trademark protection vests? First, it would be helpful to briefly define the elements.

Addressing the low-hanging fruit, bona fide means, quite simply, with good faith. Drawing from our earlier post, the café owner Santambrogio from Buti v. Impressa Perosa S.R.L. would likely be unable to establish a bona fide intent to commercially exploit clothing apparel marks included on his T-Shirts. This is because his intent was not to sell apparel; it was to advertise a café. Absent a connection to the café itself, Santambrogio’s claims to a mark would fail.

Continuous, commercial utilization is, practically speaking, the act of selling the product or service on an on-going basis. A use intended solely to expose the mark publicly in order to gain protection is not enough. Aktieselskabet AF 21 November 2001 v. Fame Jeans Inc., 525 F.3d 8, 20 (D.C.Cir. 2008). It stands to reason, based on the purpose of trademark law, that “on-going” and “continuous” relate to the amount of time required for the mark and product to become connected in the minds of consumers. Cf. Halo Mgmt., LLC v. Interland, Inc., 308 F. Supp. 2d 1019, 1033.

Thus, the analogous use standard can be restated as marketing or promotion sufficient to communicate to consumers the intent to connect the product (or service) and mark for enough time as it takes consumers to view the mark as the brand signifier for the particular product sold by the particular company. So when will marketing or promotional plans achieve this goal?

Halo Mgmt. placed the threshold at “public and widespread dissemination” and ruled that an internet homepage was sufficient because it was widely accessible, even though it had not been widely accessed. 308 F. Supp. 2d at 1033. The focus on accessible as opposed to actual access cannot be overstated.

The Court in Brookfield Communs., Inc. v. West Coast Entm’t Corp. believed that a website by itself was insufficient because only a limited number of persons were aware of its existence. 174 F.3d 1036, 1052 (9th Cir. 1999). The mild conflict regarding the sufficiency of a website can be attributed in part to the time period of each case; between Brookfield (decided in 1999) and Halo Mgmt. (decided in 2003), the internet became much more ubiquitous as a communication and marketing tool, and this trend has increased by orders of magnitude since. The result is that websites present a stronger case for widespread dissemination than the Brookfield decision would indicate. Interestingly, the parties in Brookfield stipulated that a nationwide press release constituted a use in commerce, an outcome the court was likely to reach for the reasons that follow.

There is also something fundamental behind the Halo decision, and why the parties in Brookfield would stipulate to a national press release, regardless of any indication on the record that it was ever read. Both Halo and the national press release in Brookfield reflect an affirmative attempt by the producer to publicly disseminate the mark in a commercial context. Whereas “” was unsuccessfully defended on the grounds that the mark was used in e-mail correspondences, such use is far different from a press release in a major newspaper, or ad space purchased from Google. Affirmative steps taken with the intent that they be received by the public generally, as opposed to specific members of the public, form the basis of satisfying the analogous use doctrine.

By Dan McPheeters and Michael Stein

Some examples of activities that may be protected under the analogous use doctrine are: national or regional advertising with Google or a cable company; passing out fliers or pamphlets at multiple locations around the country, such as train stations or city centers; a readily accessible web presence; the pre-production distribution of marketing materials and signage to distributors and/or retailers. The mark and associated product must be connected in some way, and it is likely that a suggested method of interaction accompanies the mark; because the basis for protection is the intent for commercial exploitation, it seems necessary that there be some means by which a prospective customer can readily purchase the product, or in some way interface with the product and producer. A website address, phone number, or local address will likely suffice.


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