Partner, professor, and philosopher Bob Cumbow explores trademark “use” in a forthcoming article in ABA’s Landslide magazine.
In “Use Is the New Protectability, Dawn Donuts Are Still Hot This Season, and Other Trademark Issues,” Bob revisits Dawn Donut fifty years after the Second Circuit decided the case.
“The ‘Dawn Donut rule,’ arising from Dawn Donut Company, Inc. v. Hart’s Food Stores, Inc. [267 F.3d 358 (2nd Cir. 1959)], holds essentially that even a federally registered senior user vested with nationwide rights may be denied injunctive relief against a remote junior user if the plaintiff’s use of its mark has not made it sufficiently known in or near the defendant’s geographic territory so as to create a likelihood of confusion. As a result, in ‘Dawn Donut situations,’ trademark plaintiffs’ attorneys have tended to send warning letters rather than seek injunctions, and defendants’ attorneys have tended to tell trademark owners to take a hike and call back when they are ready to use the mark in the local area — which often is never.”
Increased travel, Internet advertising, and the ubiquity of television beg the question of whether the Dawn Donut rule is (or should be) dead.
Examining recent cases deciding issues of trademark use, Bob concludes that courts are in flux.
In his view, “[a] brief examination of the recent jurisprudence reveals that, with respect to some types of commerce, the Dawn Donut rule is still applied as an absolute, while in other circumstances some courts regard it as only one of several factors to be considered in a balancing test and still other courts have soundly questioned and criticized the viability of the rule altogether.”
Until the Supreme Court lays down a new rule, Bob’s piece helps sort out courts’ evolving (and inconsistent) treatment of trademark use.