By Scott Hervey
There is a growing trademark dispute between a small Alaskan museum devoted to a 900 piece display of hammers and the great Los Angeles based Hammer Museum (formerly known as the Armand Hammer Museum). On February 10, 2006, the Los Angeles based Hammer Museum filed an application with the United States Patent and Trademark Office to register the mark, HAMMER MUSEUM for museum services. Early this summer, Dave Pahl, the founder of the Alaska museum, became aware of the L.A. Hammer’s application and filed his own in July. Pahl filed his application based on use in commerce and listed the date of first use as April 14, 2000.
This story has already received a significant amount of coverage, including a page one spread in the Wall Street Journal. Most of the stories focus on the “David and Goliath” element; the Alaska museum took in revenue last year of around $8,000 (half of which were from t-shirt sales) while in 2006 the LA Hammer reported approximately $10 million in sales. The Journal wrote, “if one museum is granted the mark it could stop the other from using the name” and then notes that the LA Hammer says it can date its first use to 1999. Readers may come away from the story with the belief that all is lost for Pahl and his cultural oasis in the great tundra. But Pahl should not trade in his hammers for sled dogs. Pahl may have acquired rights to the mark that are senior to the Westwood based fine art museum – at least in Haines Alaska.
Common law trademark rights resulting from a prior but non-registered use are not wiped out by a later filed federal trademark registration application. Trademark rights stem not from registration of a mark but from actual use in commerce. While some civil law nations follow the “first to file” rule which grant senior rights to the first party to win the race to the trademark office, the United States follows the rule that ownership and priority go to the party who was first to use.
Common law rights are defined by the scope of actual use and the geographical territory in which the mark was used. While a merchant may acquire common law trademark rights in the name of a brick and mortar business, that interest is limited to the geographic area in which the merchant actually does business. As such, another merchant in another town can use the exact same name for a similar business and not infringe the common law rights of the first merchant if the first merchant does not advertise or do business in that town.
The LA Hammer Museum filed its application in 2006. Contingent upon the application maturing to registration, the LA Hammer Museum will enjoy a presumptive nationwide right in and to its mark as of the filing date. This presumptive nationwide right is one of the primary motivators for filing a trademark application. However, this right is subject to any common law rights in existence at the time of LA Hammer’s filing.
The LA Hammer states that it can show a date of first use of 1999 on a brochure for the “UCLA Hammer Museum.” This is prior to Pahl’s stated 2000 date of first use. However, depending on how this brochure was utilized, it very well may be that LA Hammer’s common law trademark rights in the mark HAMMER MUSEUM is geographically limited and excludes the town of Haines, Alaska. Assuming that the LA Hammer did not use this brochure to actively market its museum to residents of Haines, Pahl may have superior rights to the mark HAMMER MUSEUM in Haines -and perhaps even the entire state of Alaska.
The USPTO provides a mechanism which enables parties to sort out issues such as this called a Concurrent Use Proceeding and it recognizes that, under certain circumstances, a registered mark can and may function to identify more than one source of goods or services. A concurrent use proceeding is initiated by an applicant filing an application that is limited as to territory. The application will be examined as all trademark applications are examined, and if it appears that the application is fit for registration it will be published. If no opposition is filed, the Trademark Trial and Appeals Board (TTAB) will prepare notices and send them to any parties named in the application as concurrent users of the Mark. In the case of an owner of a registered mark, unless it consents to the concurrent use application, the matter will move forward as a concurrent use proceeding before the TTAB. In the proceeding, the TTAB will take evidence on the scope of geographical use of each of the marks and eventually decide who can use their mark in certain geographical areas.
Pahl may not have to go through all of this though. In the Wall Street Journal article, a representative of the LA Hammer is quoted as stating that they have no interest in stopping Pahl from using the mark HAMMER MUSEUM; she continues in stating “we are a fine-art museum in California, not a museum of hammers in Alaska, we think we have very different audiences." Given that the LA Hammer appears to be indicating that it believes there is no overlap in the group of consumers who encounter the two marks, and therefore no likelihood of confusion, Pahl next step should be to work out a Coexistence Agreement which may very well allow his pending federal application to also go forward to registration.