Zirco Corp. v. American Telephone & Telegraph Co., 21 USPQ 2d (1991) p.206

SUBJECT

acquisition of trademark rights

FACTS

both P and D wanted to use mark DATACEL on products that could be confused. Z filed notice of opposition to mark that ATT had filed intent to use application. Z said it had been using mark in commerce. Because Z had used mark in comemrce before ATT, it had protected its common law rights. Z argued the common law rights would take preference over ATT application of intent to use.

A files ITU
B starts using mark in interstate commerce
Later, A's mark is published for opposition
B opposes and says A is not using it and that A does not get benefit of constructive date of use of first filing until it is registered.

RATIONAL

Trademark Trial and Appeal board said if that argument was allowed then the purpose of the ITU disappears. The opposition was dismissed, but without prejudice.

Created on: Thursday, January 27, 2000 at 18:37:10 (PST)