[E-trademarks] First use

[Dale Quisenberry]

For purposes of this chapter, a mark <https://www.law.cornell.edu/definitions/uscode.php?width=840&height=800&iframe=true&def_id=15-USC-3344077-1913738695&term_occur=999&term_src=> shall be deemed to be in use <https://www.law.cornell.edu/definitions/uscode.php?width=840&height=800&iframe=true&def_id=15-USC-85351-1913738695&term_occur=999&term_src=> in commerce<https://www.law.cornell.edu/definitions/uscode.php?width=840&height=800&iframe=true&def_id=15-USC-602412325-1913738695&term_occur=999&term_src=title:15:chapter:22:subchapter:III:section:1127>—

(1) on goods when—

(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and

(B) the goods are sold or transported in commerce<https://www.law.cornell.edu/definitions/uscode.php?width=840&height=800&iframe=true&def_id=15-USC-602412325-1913738695&term_occur=999&term_src=title:15:chapter:22:subchapter:III:section:1127>, and

(2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce<https://www.law.cornell.edu/definitions/uscode.php?width=840&height=800&iframe=true&def_id=15-USC-602412325-1913738695&term_occur=999&term_src=title:15:chapter:22:subchapter:III:section:1127>, or the services are rendered in more than one State or in the United States and a foreign country and the person <https://www.law.cornell.edu/definitions/uscode.php?width=840&height=800&iframe=true&def_id=15-USC-991716523-1913738695&term_occur=999&term_src=> rendering the services is engaged in commerce<https://www.law.cornell.edu/definitions/uscode.php?width=840&height=800&iframe=true&def_id=15-USC-602412325-1913738695&term_occur=999&term_src=title:15:chapter:22:subchapter:III:section:1127> in connection with the services.
15 USC 1127

My view is that it will definitely by the AU company’s act.  Find out when each of the above took place.

Presumably at the time of the sale the mark was on the goods, so if that is correct I would go with date of first sale into the US, unless….

Check and see if they shipped any product bearing the mark to the US before the first sale.  If so, that is going to be the earliest date.


C. Dale Quisenberry
Quisenberry Law PLLC
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Houston, Texas 77069
(832) 680.5000 (office)
(832) 680.1000 (mobile)
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www.quisenberrylaw.com<http://www.quisenberrylaw.com>

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf of Katherine Koenig via E-trademarks <e-trademarks at oppedahl-lists.com>
Date: Monday, 22 January 2024 at 7:10 pm
To: E-trademarks <e-trademarks at oppedahl-lists.com>
Cc: Katherine Koenig <katherine at koenigipworks.com>
Subject: [E-trademarks] First use
I have a client who is based in Australia, and I think I need a gut check on first use.  They sell products to a US distributor who sells in the US.  The AU company maintains control over the nature and quality of the goods.  The two entities are otherwise unrelated.

Would first use occur when the AU company sold and/or shipped branded products to the US distributor (located in the US), or when the US distributor made an in-commerce sale to US customer?  I’d think the sale to the US distributor would be sufficient, but something about the nature of the customer being a US distributor gave me pause.  The AU client calls them a “distributor,” but are they really just a customer who happens to resell the goods?

Best regards,

Katherine

Dr. Katherine Koenig
Registered Patent Attorney
Koenig IP Works, PLLC
2208 Mariner Dr.
Fort Lauderdale, FL 33316
(954) 903-1699
katherine at koenigipworks.com<mailto:katherine at koenigipworks.com>

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Targeted Intellectual Property Strategy

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