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.