tl;dr – You should always file a trademark application with the USPTO sooner rather than later.
Last week, we wrote about when and how to oppose a trademark application.
This week, trademark oppositions are back in the news. And, wouldn’t you know, it relates to football. In October 2017, the Jacksonville Jaguars filed an application for the trademark #SACKSONVILLE for shirts and entertainment services related to professional football. In the application, the Jags claim they began using #SACKSONVILLE as a trademark in commerce at least as early as September 2017.
The application was published for opposition on March 6, 2018. At that time, the 30-day window to oppose or seek an extension of time to oppose began. Right at the deadline, Yeti, LLC, which is owned by former Jags linebacker Dan Skuta filed a 30-day request for extension of time to oppose the #SACKSONVILLE application. The extension was granted (such extensions are granted as a matter of right).
Yeti followed-up by filing a Notice of Opposition on May 4, 2018. The Notice argues that Mr. Skuta created the “Sacksonville” name in 2015 and that Yeti began using the trademark in commerce that year to sell merchandise. Yeti’s argument hinges on this point; that by the Jaguars own admission, they began using the trademark in commerce AFTER Mr. Skuta and Yeti, which means they are the priority users of the trademark and the Jags are the junior users. You can read the Notice of Opposition here.
Like last week, let’s not get into the merits. Instead, let’s talk about priority and how Mr. Skuta and Yeti got themselves into this position in the first place.
In the United States, priority trademark rights USUALLY belong to the first party to use a trademark in commerce (there is one big exception to this general rule, but let’s be honest, you probably already quit reading this post because it is too long, so let’s save that for another day). Use in commerce is what it sounds like. It is NOT the first party to think of or use a word unrelated to some commercial activity. For example, some other outlets have noted that the official Twitter account for the Jags first used the term “Sacksonville” in a tweet in March 2014, insinuating that this means the team used the trademark before Mr. Skuta or Yeti, which claim use in commerce starting in 2015. This is wrong. Using a word in a tweet is not sufficient to show use in commerce and obtain priority rights.
In any event, Yeti’s position is that it has priority because it began using the trademark in commerce in 2015 while the Jags’ application provides that the team began using the trademark in commerce in 2017 (Yeti conveniently ignores that the date provided to the USPTO was an “at least as early as” date). Assuming Yeti is correct, the reason it is in this predicament is because, even though it used the trademark first, it failed to seek registration of the trademark first . . . .
Actually, that is not the case. Back in May 2015, Yeti filed a trademark application for SACKSONVILLE for a variety of stickers, clothing, and dog toys. Unfortunately, that application was abandoned in July 2016 because Yeti failed to submit proof of use of the trademark in commerce to the USPTO (something the Jags’ attorneys will certainly want to understand considering Yeti claims it was using the trademark in commerce at that time). If Yeti had simply submitted proof of use of the trademark to the USPTO back in late 2015 or early 2016, then it would have likely registered the trademark long before Jacksonville filed its application. But, it didn’t.
That decision provided Jacksonville with an opportunity to file its own application for the trademark and create a real problem for Mr. Skuta and Yeti. Here’s the thing. Regardless of who has priority, the USPTO evaluates trademark applications in the order they are filed. Part of that evaluation is determining whether a previously filed, still pending application or prior registration precludes registration because the applied for trademark is too similar to any such application or registration. Therefore, where a junior user files its application for a trademark before a priority user, the party with priority may be stopped from registering its trademark in lieu of the junior user’s (eventual) registration. This forces a party, like Yeti, to file an opposition, assuming the opposition window is still open, or take other action if it is not (let’s save that for another blog post, too) to try to obtain federal protection for its trademark.
Confused? Exhausted? Feel like you just played a mental football game? Me, too. The lesson is this: you should seek to protect your trademark rights by filing a federal trademark application with the USPTO as soon as possible.
Put differently, beat your potential competitors to the USPTO like the Titans beat the Jags to the end zone all last year.