Lack of “Use” Undermines Common-Law Trademark Claim

Following our last article about “use” and its relationship with the trademark application process, another case we came across further illustrates this concept, albeit in a more limited manner.

Weld-Tech and Aquasol Corp. both sell a plumbing apparatus called “EZ-Purge.” After Aquasol filed for and received trademark registration for the EZ-PURGE mark, Weld-Tech sued claiming that it was the first to use that mark, although without trademark protection, and that Aquasol’s use infringed on Weld-Tech’s common-law trademark, obtained through Weld-Tech’s use. Weld-Tech argued that even if Aquasol had obtained a trademark registration, Weld-Tech’s prior use entitled it to some protection so long as the mark was eligible for registration.

The timing was as follows: Weld-Tech began marketing its product in late 2003 or early 2004 and made its first sale in late 2004. It filed a patent application in March 2004. On April 30, 2004, Aquasol filed a trademark application, based on Aquasol’s intent to use the mark in commerce. The question before the court was which party had priority over the mark, Weld-Tech’s common-law use or Aquasol’s intent to use application.

The court in Weld-Tech Aps. v. Aquasol Corp. first explained that when two companies seek to protect the same mark priority is determined by the first to appropriate and use the mark in commerce so long as there is an intention to make continued use of the mark. Filing an intent to use the mark is sufficient for this showing. But here, Weld-Tech claimed to be the senior user of the mark, which could trump Aquasol’s trademark registration.

The court explained that prior use without a registration requires actual use and not just intend to use. Even marketing that incorporates a mark is not enough when common-law rights are at issue, only actual use (typically, sales) suffices for that showing. Thus, because Weld-Tech’s first sale was after Aquasol’s registration application defeated any claim that Weld-Tech made based on common-law rights, and its claims were dismissed.

In this case, the nuances of the trademark process pitted an unregistered mark with actual sales against an intent to use application without sales. This case highlights the benefit of filing for a trademark registration even if no sales have yet been made.

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