I thought it’d be useful to highlight a couple of federal cases where common law trademark rights have prevailed over federally registered trademark rights. Over the next few weeks we’ll be posting summaries of cases (along with plain English “translations”) to highlight the fact that common law trademark rights are legally defensible.
The first case I want to highlight is old, but the legal ramifications still apply today:
Cuban Cigar Brands N. V. v. Upmann Int’l, Inc., 457 F. Supp. 1090, 1100 (S.D.N.Y. 1978) aff’d sub nom. Cuban Cigar Brands N.V. v. Upmann Int’l, Inc., 607 F.2d 995 (2d Cir. 1979)
Defendant contends that its marks Carl Upmann and Upmann’s Repeater are incontestable and their use cannot be enjoined. This argument, however, presumes that defendant purchased a mark which did not infringe upon any existing prior to its registration and that it used its mark in good faith. Neither presumption is correct. Plaintiff’s mark was used nationwide prior to 1954 when defendant’s marks were registered. As such, defendant’s marks are not incontestable as against that of plaintiff for, since defendant’s use infringes plaintiff’s valid common law rights obtained long prior to defendant’s registration, it has no shield of incontestability in a suit by plaintiff to enforce that mark.
Cuban Cigar Brands (the plaintiff) sued Upmann Int’l (the defendant) over the marks ‘Carl Upmann’ and ‘Upmann’s Repeater’. The defendant contended that the marks were ‘incontestable’, a distinction certain trademarks can receive after five years of consecutive use from the date of federal registration. This ‘incontestable’ status applies to a federally registered trademark if other criteria are met. The most notable criterion for our purposes is that even an incontestable federally registered mark is not incontestable against a prior trademark user whose use began before the federal registration was made.
The plaintiff claimed (correctly) that the defendant’s marks weren’t incontestable because the plaintiff had established common law trademark rights before the defendant registered with the federal trademark office. The judge ruled in favor of the plaintiff since they had been using the marks prior to 1954, which is the year the defendant registered their marks with the US Patent and Trademark Office.
In the US, precedence is given to the trademark that was used first, regardless of whether or not it is registered with the USPTO. That’s why establishing a timeline of use for your mark and claiming the rights you have legally earned is so important. This also points out that the courts take trademarks very seriously, even when they are not federally registered.
Common law (use) rights are important and can be strong. List a claim to your trademark rights in under 10 minutes.