Use In Commerce Must Be Lawful In Order To Acquire Priority

Addressing whether use in commerce must be lawful in order to establish trademark priority, the Ninth Circuit, in a case of first impression, adopted the U.S. Patent and Trademark Office (USPTO) policy that "only lawful use in commerce can give rise to trademark priority." To be lawful, a use must be compliant with federal labeling requirements. CreAgri, Inc. v. USANA Health Sciences, Inc., 2007 U.S. App. LEXUS 866 (9th Cir., Jan 16, 2007) (Hawkins, J.).

CreAgri began using the OLIVENOL mark in 2001 on dietary supplements. At the time, the active ingredient in CreAgri’s product was not capable of being accurately measured. Although CreAgri could have applied for an exemption from Food and Drug Administration (FDA) labeling restrictions, it did not do so. However, CreAgri twice changed the label, indicating the content of the active ingredient in OLIVENOL. Meanwhile, the USPTO, when examining CreAgri’s application to register its OLIVENOL mark on the principal register, noted that