Congress legitimately determined that a federal agency should not use government funds to issue certificates ‘in the name of the United States of America’ conferring statutory benefits for use of vulgar words and lewd sexual images. 15 U.S.C. 1057(a). Although[Erik Brunetti]has a First Amendment right to use a vulgar word as a mark for his clothing line, he has no comparable right to require the government to register vulgar terms, issue registration certificates for them in the name of the United States, inscribe them on the USPTO’s Principal Register, and bestow valuable benefits on the markholders’ use of the terms in commerce.”
Thus, the lesson here is clear: any doubt about actual use should lead to the filing of an intent-to-use application, and not risk an actual use application: if an intent-to-use application had been filed by Couture, he would have gotten the benefit of the earlier filing date when the mark was actually used in commerce and issued as an actual use mark. See 15 U.S.C. § 1057(c).
Thus, the lesson here is clear–any doubt about actual use should lead to the filing of an intent-to-use application, and not risk actual use.If an intent-to-use application had been filed by Couture, he would have gotten the benefit of the earlier filing date when the mark was actually used in commerce and issued as an actual use mark. See 15 U.S.C. § 1057(c).
INTA contends that the Court mischaracterizes the extent of Louboutin’s claim, interpreting that it is intended to cover the color red, when in fact the registration very clearly specifies that the mark covers a lacquered red sole. Here’s what the law says: Under Section 7(b) of the Lanham Act (the federal Trademark Act), 15 U.S.C. 1057(b), a certificate of federal registration is considered prima facie evidence (on its face/presumptive) of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate, subject to any conditions or limitations stated in the certificate. INTA asserts that such limitations are clearly stated, in this instance, and that the court “failed to analyze the mark as registered,” instead mistakenly characterizing the mark as broadly covering red shoes.