Two companies, Kelly Services, Inc. (hereinafter referred to as “Kelly”) and Creative Harbor LLC, created employment-related apps that are not entirely similar, but would operate in the same general market. Unfortunately, both companies titled their respective apps as “WorkWire.” Kelly, who had not filed “WorkWire” for trademark protection, tried to submit WorkWire to the Apple App Store, failed, tried again, and succeeded. Two hours before the App Store released WorkWire for public purchase, however, Creative Harbor filed a “Creative Intent to Use” trademark application for their app through the USPTO’s online trademark filing tool (TEAS). Since “WorkWire” had not previously been registered by anybody, including Kelly Services, Creative Harbor’s application was approved.
Just over a week ago, the United States District Court for the Eastern District of Michigan ruled that, if Creative Harbor manages to use WorkWire in commerce within a certain time frame, thus completing the application requirements, then Creative Harbor will have superior rights over Kelly Services for the name WorkWire. The case brings up an interesting issue involving the meaning of the phrase “use in commerce.”
Kelly argued that, by submitting their app to the App Store, they “used” the app “in commerce” since under United States trademark law an attempted use in commerce counts as “use in commerce.” Thus, as Kelly argues, the App Store’s acceptance of their app, regardless of an actual sale, is an attempted use for “use in commerce” purposes. The court disagreed, however, because the transaction between Kelly and the App Store prior to WorkWire’s release was not sufficiently “open” or “public.” In other words, Kelly did not, prior to Creative Harbor’s trademark application, “inform the public” that Kelly’s “WorkWire” app was available for purchase.
Kelly relied on Raintree Publishers, Inc. v. Brewer to establish its case. In Raintree, two companies desiring to publish children’s books wanted to use the name “Raintree Publishers.” The first Raintree had sold one of its books to a distributor, and the other argued that a sale to a distributor is an “internal transaction” and does not equate to use in commerce. The Raintree court ruled that the sale constituted “use in commerce.” The Eastern District of Michigan ruled that Raintree did not apply to the instant case since Creative Harbor’s application preceded any actual sale by Kelly Services, but also found Raintree difficult to reconcile with the Sixth Circuit’s precedent that use in commerce must be “sufficiently public.”
Ultimately, the Eastern District of Michigan concluded that Kelly’s submission to the App Store was not sufficient “use in commerce” since the app was not, at the time of Creative Harbor’s registration, available to the public for purchase. This raises some interesting issues. What is “use in commerce?” What does it mean for a product to be “available to the public?” The App Store accepted and released Kelly’s WorkWire on the same day, with a slight delay between acceptance and release. In the mere hours between acceptance and release, Creative Harbor filed their trademark application. Is the App Store at all to blame for Kelly’s potential loss? Is the Eastern District of Michigan correct in their ruling? Should a matter of hours cost Kelly the right to use their app’s name?
By Brian Unger
