James D. Crosby, Attorney at Law. Complex and General Business Litigation and Trial Representation. San Diego, California. O: (619) 450-4149 C: (858) 705-0083 Email:

Trademarks – Timing, Intent and Use in Commerce

James D. Crosby, Attorney at Law - Complex and General Business Litigation and Trial Representation - San Diego, California

An interesting post on trademarks by my partner, Doug Lytle. Follow his blog, Takes on Law. Always interesting and timely. Jim

Takes On Law

I have been following the twists and turns of Kelly Services Inc. et al. v. Creative Harbor LLC (ED Mich) — an interesting trademark dispute over priority in the mark “WorkWire” for a mobile application for use by employers and prospective employees.

Two opinions in Kelly Services v. Creative Harbor illuminate important rules and strategies regarding “intent-to-use” trademark applications and what it means to use a mark in commerce, particularly in the context of newer technologies like mobile apps.  [Note:  The final paragraph of this post lists the key take-aways.]

Creative Harbor claimed priority in the WorkWire mark based on two “intent-to-use” applications (“ITUs”) it had filed with the USPTO.  Kelly Services claimed priority based on having used the mark in commerce before Creative Harbor filed its ITUs.

In early 2013, Kelly Services began developing an iPad application (“App”) for distribution in the Apple App Store.  On February 4, 2014, it submitted the completed App to Apples iTunes…

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