TMEP 1205.01(b)(vi): First Use Before September 21, 1950 – Grandfather Clause

October 2017 Edition of the TMEP

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1205.01(b)(vi)    First Use Before September 21, 1950 – Grandfather Clause

Olympic-related matter enumerated in the OASA need not be refused registration where an applicant claims pre-existing use of the mark for any lawful purpose prior to September 21, 1950. 36 U.S.C. §220506(d)(1). An applicant making such a claim is permitted to continue lawful use of the mark for the same purpose and same goods or services. 36 U.S.C. §220506(d)(2).

Registration of a new mark that creates a materially different commercial impression than the earlier mark, even if that mark incorporates the grandfathered wording, is not permitted. O-M Bread, Inc. v. U.S. Olympic Comm., 65 F.3d 933, 938-39, 36 USPQ2d 1041, 1045 (Fed. Cir. 1995) (sustaining opposition against registration of OLYMPIC KIDS for bakery products, even though applicant had grandfather rights in OLYMPIC for the same goods, and noting that OLYMPIC and OLYMPIC KIDS are not legal equivalents).

Expanding the use of a grandfathered mark to additional goods and services is generally not permissible, and should be construed very narrowly. See In re Kayser-Roth Corp., 29 USPQ2d 1379, 1383-84 (TTAB 1993) (reversing the refusal to register OLYMPIC CHAMPION when applicant sought to expand use of the mark from various clothing goods to socks; finding that applicant had grandfather rights in the same mark for certain apparel and noting that socks have "attributes in common with the other named [clothing] goods" that permitted this additional use by applicant).