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[hockeydude34]

Greetings-

I recently filed for registration, and recieved a serial number.  My filing date is X.

I noticed someone filed a similar application for similar mark, etc., with a filing date of X+1.  I see no disclosure to a "prior use" date, or do I see any claim to priority.

Thus, as the prosecution of each of these applications progresses, I am assuming (all other things being satisified) that I would get the 'R', and the other Applicant would not??

On that note, should I file an opposition proceeding once the application publishes?  I hope not to do this since it looks expensive.

One other question:  I do not "physically" sell my product, currently, in 49 states.  However, I do have a website that I can document visitation from at least 1 person from every state - is this enough to show interstate commerce?  Or do I need a "physical" presence in every state?

If need be, since I filed "intent to use," I think I get 6 months after registration to have a presence in every state - is that the standard??

Thanks...

[JSonnabend]

First of all, you do not need to have "presence in every state."  All you need is to have a product and/or service "in" interstate commerce.  For products, that usually means shipping the branded goods across state lines (or into a state from outside the country).  For services, it's a bit fuzzier, but essentially you need to draw clients from across state lines (but not necessarily).

Assuming you filed first, your application has priority.  Whether or not the junior application conflicts with yours, and whether or not you would be well advised to oppose it if it is allowed, cannot be answered here on the facts you've given.  It's also entirely possible that the junior applicant opposes your application, but that's a different issue as well.

- Jeff

[hockeydude34]

so if I ship 1 product across one state line once per year, that's sufficient for "in use" and federal registration purposes?

[JSonnabend]

Generally speaking, yes, as long as the transaction is "bona fide" and not a token use simply for purposes of meeting the interstate commerce requirement.

- Jeff

[hockeydude34]

cool, thanks.

As for the conflict with the other application.

I am using TM "X", for G&S "Y".

The other application filed for TM "X", for G&S "Y"... but with filing date of 1 day after mine.  Obviously I can't do much about it now - so not worried about it.  But I surmise I'll keep an eye on publication and go from there.

[chugan]

Greetings-

I recently filed for registration, and recieved a serial number.  My filing date is X.

I noticed someone filed a similar application for similar mark, etc., with a filing date of X+1.  I see no disclosure to a "prior use" date, or do I see any claim to priority.

Thus, as the prosecution of each of these applications progresses, I am assuming (all other things being satisified) that I would get the 'R', and the other Applicant would not??

On that note, should I file an opposition proceeding once the application publishes?  I hope not to do this since it looks expensive.

I think the second application will be suspended pending publication (and registration) of yours.  That is, if the second application's examing attorney finds that yours might preclude registration of the second.

Chris

http://nashbillies.wordpress.com/

[DogDayPM 9er9er9er]

so if I ship 1 product across one state line once per year, that's sufficient for "in use" and federal registration purposes?

Actually I think the standard may be every 3rd year on the basis that your mark is abandoned if not in interstate commerce for a 3 year period. (??)

To Jeff's comment of "bona fide", the discussion reminds me of Procter & Gamble's "minor brands" program case.  A court canceled some of their registrations because it (the court) found "in commerce" to be a sham. 

P&G was holding ca. 150 registered marks that they were not actually using.  Once every third year they would bottle up Prell Shampoo (e.g.) into a bunch of differently labeled bottles named with the marks they were trying to hold, and ship a box each to a few grocers in a few states. 

The actual case involved a tampon brand and a surprising pattern of facts.  Since P&G didn't actually produce any tampons at the time, they were stealthily obtaining J&J tampons and then mis-branding the J&J goods with the P&G minor brand desired to be maintained and shipping of the J&J (now P&G branded) goods into commerce every third year.  But J&J was ignorant of all this until P&G filed suit against J&J alleging a J&J deodorant brand was confusingly similar to P&G's tampon brand.

You have to wonder why someone in P&G's managment chain didn't say "whoa guys, if we sue J&J on this brand, all our dirty laundry's going to get aired".