Trademark Lawyers Blog | Pac 12 Knows How to Protect & Enforce Their Trademark

In the United States, one acquires trademark rights when it first uses a distinctive mark in interstate commerce.  Both "distinctive mark" and "use in interstate commerce" are terms of art for trademark lawyers.  However, prior to making a use in commerce, one can file an intent to use trademark application with the United States Patent and Trademark Office (USPTO), so long as she has a bona fide intent to use the trademark.  This filing serves as a constructive first use as long as the trademark is eventually used and procures into a trademark registration.

The college football conference formerly known as the PAC 10 has sought numerous intent to use trademark applications in light of its adding two teams to its conference.  The PAC 12 Conference filed an intent to use trademark application for logos as well as the PAC-12 characters themselves.  Their attempts to register a trademark were presumably done to take advantage of the constructive use benefit associated with filing an intent to use application.

However, they have not only sought trademark protection via their applications and registrations, but they are already looking to enforce their trademark rights.  In fact, they are undoubtedly relying upon, in part, their sought after trademark registration applications in going after the domain name pac12.com via a UDRP with WIPO.  As has been reported in a domain name and trademark article, the conference will have to overcome the domain name owner's attempts to use the domain name related to the late rapper Tupac in order to establish rights to the domain name.  While the outcome is yet to be determined, trademark owners and lawyers should learn from the conference's commitment to registration and enforcement of its intellectual property rights.