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The Early Bird Gets the Trademark: Don’t Delay Filing Intent-to-Use Applications

A recent US Patent and Trademark Office Trademark Trial and Appeal Board (TTAB) decision serves as an important reminder that it is rarely too early for a new business to protect a trademark it plans on adopting.

In some cases, waiting even just a few days to file a trademark application may leave the door open for another brand to establish prior trademark rights.

In the case at issue, a US intent-to-use trademark application for the mark BLAST BLOW DRY BAR was initially refused for regis- tration by the US Patent and Trademark Office because another entity had filed a use-based application for the same mark covering the same services just two days earlier. A US intent-to- use trademark application allows an entity to reserve rights to a trademark before it actually starts using the mark, provided that the applicant has a bona fide intent to use the mark. Once the applicant begins using the trademark, it gets the benefit of its earlier filing date (instead of its actual use date) for purpose of establishing priority over other entities seeking to use or register the same or a confusingly similar mark.

On December 10, 2011, a Minnesota entity called “Blown Away,” d/b/a Blast Blow Dry Bar, filed its US intent-to-use trademark application for the mark BLAST BLOW DRY BAR, covering hair salon services. However, a Texas entity called Blast Blow Dry Bar had filed a use-based US trademark application on December 8, 2011 for the mark BLAST BLOW DRY BAR, covering hair salon services. Although the Texas entity had only provided its hair salon services to four customers and had done so free of charge, the TTAB ruled that such limited use was sufficient actual “use in commerce” to establish the Texas entity’s prior rights to the mark. As a result, the Minnesota entity’s mark—filed only two days later—was refused registration.This decision is a cautionary tale against delaying the decision to reserve rights to a trademark by filing a US intent-to-use trademark application. Had the Minnesota entity filed its trademark application for the mark BLAST BLOW DRY BAR only a few days earlier, when it first decided to adopt the mark, form a company, or secure a lease for its salon—all of which happened before the Texas entity filed its application—the Minnesota entity would have had priority filing rights and thereby been in a substantially stronger position.

©2020 Katten Muchin Rosenman LLPNational Law Review, Volume IV, Number 177


About this Author

Karen Artz Ash, Intellectual Property Attorney, Katten Muchin

Designers, apparel manufacturers and other clothing businesses seek out Karen Artz Ash, national co-chair of Katten’s Intellectual Property department and co-head of the Trademarks and Trademark Litigation practice, because of her experience in all aspects of intellectual property, trademarks and copyrights.

Karen handles the structuring and administration of intellectual property, including establishing holding companies and trusts, and the creation, development, implementation and administration of licensing, servicing and manufacturing for companies worldwide....

Bret J. Danow, Katten Muchin law firm, trademark attorney

Bret J. Danow focuses his practice on trademark licensing and brand protection with a concentration in the fashion industry and regularly counsels clients in the apparel, sporting goods, publishing, education, entertainment, liquor, banking, financial services and consumer electronics industries.

Bret counsels and assists clients in connection with all facets of trademark law, including licensing, retail store agreements, distribution agreements, celebrity endorsement agreements, trademark clearance, prosecution, enforcement, monitoring and portfolio management, agreement administration, domain name disputes and intellectual property-related diligence and corporate transactions. He represents companies ranging from small start-ups to large international fashion brands.