Use analogous to trademark use can establish trademark priority by merely even before the trademark has been used in commerce.
Unlike other jurisdictions, trademark rights arise when marks are used rather than solely from being registered. Generally speaking, use means goods or services are being offered for sales to relevant consumers. Or in the case of “use in commerce” required by the United States Patent and Trademark Office for a trademark registration, the mark must be used in commerce that Congress can regulate.
However, in some instances “use analogous to trademark use” will give rise to common law trademark rights. Use analogous to trademark use will not be acceptable use for a trademark registration, but can be important for a showing of priority over other parties trademark right claims. In particular, use analogous to trademark use can be advertising and promotion, which is not normally considered use in commerce that gives rise to trademark rights, but establishes trademark priority when the party advertising the trademark uses the mark in commerce in a commercially reasonable time.
Use Analogous to Trademark Use Example
One of the foundational cases outlining use analogous to trademark use is Maryland Stadium Authority v. Becker and it may be easiest to explain analogous use by explaining the case. In the case, the Baltimore Orioles, of Major League Baseball, were going to move to a new stadium at the start of the 1992 season. In 1991, many fans went to home games at their old ballpark, Memorial Stadium, to see one last game there. The new names being mentioned for the new ballpark were “Camden Yards” and “Oriole Park.” As a compromise, the new ballpark was named “Oriole Park at Camden Yards.”
A late summer day watching a game at Oriole Park at Camden Yards.
During the final season at Memorial Stadium in 1991 an entrepreneurial t-shirt seller, named Roy Becker, sold t-shirts that said “Camden Yards means baseball.” Toward the end of the 1991 season, the Maryland Stadium Authority (MSA) sent a cease and desist letter to Mr. Becker stating he needed to stop using “Camden Yards” because it violated their trademark rights. Mr. Becker responded that the MSA did not have any trademark rights to CAMDEN YARDS because they did not use the mark in commerce yet.
Despite finding the MSA did not use CAMDEN YARDS in commerce prior to Mr. Becker, the court held the MSA established trademark rights in the CAMDEN YARDS name by its analogous use of the mark. Analogous use included the MSA’s advertising and promotional efforts and subsequent use of the trademark within a commercially reasonable time. In other words, due to the MSA’s efforts to advertise the stadium project as early as 1990 and subsequently selling t-shirts, tickets, and related items in a “reasonable amount of time” after their initial promotion of a new ballpark being built at Camden Yards, they acquired trademark priority over Mr. Becker.
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