Trademark Priority

Understanding Trademark Priority

Trademark priority plays a pivotal role in resolving disputes and determining rights to a trademark under both federal and state laws in the United States. According to the principle of trademark priority, rights to a trademark are typically awarded to the first entity or individual to use the trademark in commerce. This means that the entity or individual who first offers goods or services under a specific mark is usually recognized as the legitimate owner of the trademark. This principle is rooted in the notion that the initial user of a mark has already established goodwill and reputation in the market, and it would be inequitable to permit another entity to register and benefit from this established market presence.

Under federal law, specifically the Lanham Act, this concept is ingrained, emphasizing the significance of the first use of the trademark in commerce. While the Act does provide advantages and protections for registered trademarks, it also recognizes and upholds rights based on common law, or unregistered, use. This means that even unregistered trademarks can be defended against trademark infringement if the user can prove prior use and the establishment of goodwill and reputation associated with the trademark. However, federal trademark registration offers significant advantages such as constructive notice to potential infringers, the ability to recover profits and damages, and the presumption of nationwide priority.

State laws also uphold the principle of trademark priority, albeit with variations in application and scope from state to state. Generally, state common law protects the rights of the first user of a mark within that state’s borders, prioritizing actual use over registration. However, the protections offered are geographically limited to the boundaries of the state. Registering a trademark at the state level can provide additional protections and enforcement mechanisms, but these are also confined to the state’s jurisdiction.

Notably, while priority of use is often more critical than priority of registration, there are exceptions. For instance, an entity with a federal registration may assert priority over a later user in a different geographical area, given the nationwide constructive notice conferred by federal registration.

In conclusion, trademark priority under both the Lanham Act and state laws centers around the principle of first use, with the initial user of a mark generally deemed the rightful owner. Despite variations in application and geographical scope, the underlying theme is the protection of the goodwill and reputation established by the first user of the trademark in commerce, with both federal and state laws offering avenues for asserting and defending these rights.

Defining Terms – Senior User vs Junior User

Understanding the distinction between a senior user and a junior user is fundamental to navigating issues of trademark priority. The senior user, often referred to as the prior user, is the entity or individual who first employs the trademark in commerce. By virtue of being the initial user of the trademark, the senior user establishes a degree of goodwill and reputation associated with the trademark, thereby earning the right to claim ownership and protect the trademark against infringement. This usage-based right stems from the foundational principle of trademark law that prioritizes actual use in commerce as the basis for establishing trademark rights.

Contrastingly, the junior user is any subsequent entity or individual who begins using the trademark after the senior user. The junior user’s rights are typically subject to the prior rights established by the senior user, and any use of a confusingly similar mark in the same or related fields can be contested as infringing on the senior user’s rights. In cases of disputes, the junior user must be vigilant of the senior user’s established rights and tread carefully to avoid legal ramifications, such as cease and desist orders or lawsuits claiming trademark infringement.

Moreover, the Lanham Act introduces another layer to this dynamic by addressing the concept of constructive use through filing a federal trademark application. According to Section 7(c) of the Lanham Act, the filing date of a federal trademark application is deemed as the owner’s date of constructive use of the trademark, which can establish nationwide priority. This provision implies that an entity filing for a trademark registration (senior filer) gains a form of priority over subsequent filers (junior filers) across the country, with an exception for those who can prove actual use of the trademark prior to the application date.

Therefore, while a senior user in the traditional sense gains rights through actual use in commerce, a senior filer under the Lanham Act can secure a form of nationwide priority through constructive use by filing a federal trademark application. The interplay between senior and junior users, along with the additional considerations brought forth by federal filing, underscore the complexities of establishing and defending trademark rights and priority in the United States.

First To File A Trademark Application

The trademark application filing date plays a pivotal role in determining trademark priority within the United States, offering significant advantages especially in a system where trademark rights are traditionally accrued through the first use in commerce. When a trademark application is submitted to the United States Patent and Trademark Office (USPTO), it establishes a federal priority date, creating a form of constructive use and setting a crucial benchmark in the adjudication of potential trademark disputes. This holds true regardless of whether the trademark is actively being used in commerce at the time of filing.

Applications at the USPTO are meticulously examined in the chronological order of their filing dates, not based on the dates the trademarks were first used in the marketplace. The examining attorneys conduct comprehensive searches for prior trademark filings with similar marks to identify potential conflicts, but they do not compare the alleged dates of first use stated in the applications. This procedural aspect underscores the strategic advantage of being the first to file a trademark application.

In scenarios where a senior user, who has been using the trademark in commerce, files after a junior user has already submitted an application, the senior user’s application is queued behind the junior user’s application. The senior user, despite having precedence in actual use, must await the resolution of the initially filed application before their own application proceeds through the examination process. Should the junior user’s application advance through the examination phase and be published for opposition, the onus falls on the senior user to contest the application during this stage, placing them in a position where they must actively safeguard their prior rights.

This dynamic emphasizes the considerable leverage and protective value that comes with an earlier filing date, as it can shape the trajectory of trademark registrations and potential conflicts. It also highlights the importance for entities and individuals to be proactive in filing trademark applications, as doing so can fortify their position in the landscape of trademark priority and mitigate the challenges posed by subsequent filings from senior users.

What Is Constructive Use Trademark Priority

Constructive use is a significant concept in trademark law, derived from Section 7(c) of the Trademark Act, which allows a person or entity to establish priority for a trademark based on their good faith intent to use the trademark in commerce. This principle is essential as it recognizes the rights of those who have made significant preparations and investments towards using a trademark, even before actual commerce has occurred. The United States, in particular, allows for the filing of an Intent-to-Use (ITU) application with the United States Patent & Trademark Office (USPTO), enabling applicants to reserve a trademark while they finalize preparations to use it in commerce. This reservation is particularly advantageous as it allows entities to safeguard their interests in a mark in anticipation of future use.

After the trademark is actively used in commerce, it is incumbent upon the applicant to submit either an Allegation of Use (AOU) or a Statement of Use (SOU) to demonstrate the trademark’s commercial utilization. This step is crucial as it affirms the transition from intent to actual use, thereby solidifying the applicant’s claim to the mark. If the applicant succeeds in substantiating both a genuine intent and the subsequent commercial use of the trademark before any competing parties, they are accorded constructive use trademark priority.

However, achieving registration is imperative for the principle of constructive use to be applied, signifying that the application has matured into a bona fide trademark registration. This status is not invulnerable, as there are specific circumstances that can undermine constructive trademark use in a priority dispute. These include prior common law use in commerce before the ITU application’s filing date, an earlier filing date for another ITU or an Actual Use application, or a foreign application that precedes the USPTO ITU or Actual Use application, with a subsequent USPTO application filed within three months of the international trademark filing date under Section 44(d).

In essence, constructive use serves to establish trademark priority, providing a balanced mechanism for entities to secure their rights and navigate the competitive landscape of trademark registration, while ensuring that the principles of good faith and actual use are duly upheld.

Contact Our Chicago Trademark Attorneys

Navigating the intricacies of trademark priority and responding to USPTO office actions, including those involving likelihood of confusion, can be challenging. We encourage you to reach out to our trademark attorneys to see how we may guide you through this complex process. Contact us today to discuss how we can assist you in securing and defending your valuable trademark rights.