Overview Of Trademark Priority

Understanding The Importance Of Trademark Priority

Trademark priority, as defined in the United States Patent & Trademark Office’s (USPTO) Trademark Manual of Examining Procedure (TMEP) and the Lanham Act, is a fundamental principle that delineates rights over trademark disputes. Essentially, this principle asserts that trademark rights typically are granted to the entity or individual who first uses the mark in commerce. This means that the “first in time” is often “first in right.”

In the TMEP, priority is treated as a significant determinant in assessing the registrability of a trademark. According to the TMEP, use of a mark in commerce establishes both priority and rights, thus the person who first uses a mark in a genuine commercial transaction acquires common law rights to the trademark. This takes into account both “actual use” and “intent to use” applications. In cases of a dispute, if the applicant can prove that they used the mark in commerce before the opposing party, they usually have superior rights to the trademark.

Under the Lanham Act, the principle of trademark priority is clearly established and enforced. The Act, which provides the statutory framework for trademark law in the United States, further emphasizes the importance of being the first to use the trademark in commerce. However, registration of a trademark with the USPTO under the Lanham Act also provides nationwide constructive use, which can be used to establish priority against subsequent users of the mark. It’s important to note, though, that this constructive use only applies to disputes with parties that began use of a similar mark after the filing date of the federal trademark application.

Therefore, in both the TMEP and Lanham Act, the key to determining trademark priority largely hinges on the ‘first use’ principle. It serves as a guide to the USPTO, courts, and businesses in settling rights over trademark disputes. This framework upholds the belief that the person or entity who first uses the mark in commerce should own the rights to the trademark.

Defining The Senior User and Junior User

The terms “senior user” and “junior user” are widely used in the context of trademark law to denote the order in which parties have started to use a specific trademark. The senior user, also known as the prior user, is typically the person or entity who first uses the mark in commerce, hence establishing priority. The junior user, conversely, is the person or entity that starts using the trademark after the senior user has already done so.

However, in the U.S. trademark law, the principle of “first-to-use” is subject to a significant exception which is the “Intent to Use” (ITU) application under the Lanham Act. Under Section 7(c) of the Lanham Act, the filing date of a federal trademark application establishes the owner’s date of constructive use of the mark, thereby granting the applicant nationwide priority. This means that even if a person or entity has not yet used the mark in commerce, they can still secure their place as the senior user by filing an ITU application, essentially claiming “first in line” status for use of that particular mark.

However, this nationwide constructive use priority isn’t absolute. It doesn’t override the rights of anyone who can show that they began using the trademark in commerce prior to the ITU application filing date. In this scenario, the party that used the mark first would be considered the senior user in the geographical area where they have established their business, even if they are a junior filer for trademark registration compared to the ITU applicant.
In essence, while the first use of a trademark in commerce is generally the deciding factor for priority, an ITU application provides an opportunity to establish senior user status before actual use, subject to exceptions for prior users. This system attempts to balance the interests of those who are first to conceive of a mark and indicate their intent to use it with those who are first to actually use the mark in commerce.

Exception – Constructive Use Priority

In the realm of United States trademark law, the general rule is that the party who first uses a trademark in interstate commerce holds priority and is considered the senior user of that mark. This “first-to-use” rule underscores the value and rights associated with the initial commercial use of a mark. However, an important concept known as “constructive use” presents an exception to this rule, thereby allowing for nuanced interpretation and application of trademark priority.

Constructive use is a legal principle that comes into play when a party files an application to register a trademark with the USPTO before actual use in commerce occurs. This filing is often referred to as an “Intent to Use” (ITU) application. Under Section 7(c) of the Lanham Act, the filing date of a federal trademark application establishes the owner’s date of constructive use of the mark. This means that the applicant is treated as if they had used the mark in commerce from the filing date of the application, granting them a form of nationwide priority.

However, this constructive use priority does not extend unilaterally and has its limitations. For instance, it does not supersede the rights of a party who has used the trademark in commerce in a specific geographic area prior to the ITU application filing date. In such cases, the prior user can claim senior user status and enjoy the associated rights within the area of their established business, even if the ITU applicant has constructive use priority on a nationwide scale.
Hence, while the principle of first use holds significant weight in determining trademark priority, the concept of constructive use introduced through the ITU application process adds complexity to the process. This mechanism helps protect the interests of businesses that have conceived a mark and have concrete plans to use it, but have not yet introduced it in commerce.

The Importance of Trademark Priority

Obtaining trademark priority is a vital step in safeguarding a company’s brand, image, and reputation. Trademark priority essentially determines who has the rightful ownership and exclusive use of a mark, often a determining factor in trademark disputes.

There are two primary strategies to secure trademark priority. The first involves using the trademark in interstate commerce as early as possible and then promptly applying for federal trademark registration with the United States Patent and Trademark Office (USPTO). This ensures that the party is not only the first to use the mark, aligning with the U.S. “first-to-use” principle, but also is actively taking steps to legally secure their trademark rights.

The second approach involves filing an “Intent to Use” (ITU) trademark application as early as possible with the USPTO. This allows a party to establish constructive use of the mark, which essentially means the filing date of the ITU application is considered as the date the trademark was first used. An ITU application enables an entity to claim rights to a mark before it is actually used in commerce.

Furthermore, the USPTO offers a certain degree of flexibility with ITU applications. After an ITU application is approved and a Notice of Allowance is issued, the applicant has a six-month window to file a Statement of Use demonstrating evidence of the mark’s use in commerce. If the applicant cannot demonstrate usage within this initial period, they can request an extension. The USPTO allows for up to five six-month extensions, meaning that an applicant can potentially have up to 36 months from the date of the Notice of Allowance to file a Statement of Use.

The strategies of early use and immediate registration, as well as early ITU application, serve to ensure maximum protection and ownership rights over a trademark. The availability of extensions for filing a Statement of Use also provides a valuable buffer for businesses that are still in the process of rolling out their products or services in commerce. All these mechanisms underscore the importance of a proactive approach in managing trademark rights and securing priority.

Contact Our Chicago Business Attorneys

We understand the importance of protecting your intellectual property rights, especially when it comes to trademarks. Your trademark is a valuable asset that defines your brand, and we recognize that securing its protection can be crucial to your business’ success.

Our business attorneys are well-versed in all aspects of trademark law, including obtaining trademark priority, filing federal trademark applications, and navigating complex trademark disputes. Whether you’re looking to apply for an “Intent to Use” trademark application, need assistance with filing a Statement of Use, or are interested in understanding the nuances of interstate commerce use, we are here to guide you every step of the way.

We believe in a proactive approach to managing your trademark needs and will work diligently to safeguard your business’ brand and reputation. Don’t leave your valuable trademarks unprotected. Please contact us today to see how our business attorneys can assist you with your trademark needs and help secure the future of your business.