Establishing Trademark Priority

Acquiring a federal trademark registration provides the owner of the trademark various trademark rights and presumptions. Federal trademark registration gives the owner of a trademark the presumption of a valid trademark, constructive use of the trademark on the date of the trademark application, and creates a nationwide constructive notice of such trademark registration. However, holding a valid and incontestable federal trademark will still not guarantee the exclusive right to use the trademark in every instance. This makes the concept of trademark priority an important one to understand in regards to trademark law.
Trademark priority is critically important for any business owner or entrepreneur. The best way to obtain the broadest and most powerful legal protection for a trademark is to begin to use the trademark as early as possible.

Prior User

Trademark-PriorityUnited States common law gives trademark rights based on priority of use of a trademark within a geographic area. This means that the first person to use a trademark, has the right to that trademark within a given geographic location. A federal registrant could, potentially, not be the first user of a trademark. This would give an unregistered prior user rights that may be superior to that of the federally registered user within a given location. A prior user is an individual who either started using a trademark or applied for federal registration, before the current trademark applicant or registrant. The Lanham Act establishes that the date of filing a federal trademark application will be the owner’s date of constructive use of the trademark. This date establishes nationwide trademark priority over everyone except someone who began using the trademark prior to that application date. The Lanham Act further establishes that a successful trademark registration will prevent anyone, including the prior user, from claiming ownership of the trademark or expanding the use of the trademark.

Prior User vs. Junior Registered User

Typically, a federally registered trademark owner is given the exclusive right to use the trademark nationwide. The only potential way for a prior user to get pass this presumption is if the prior user can show he or she used the trademark prior to the registrant’s date of filing a trademark application, as well as if the prior user acquired common law rights of using the trademark.
Because a registered trademark owner is given nationwide priority, the prior user will only be able obtain trademark rights in the geographic location of use and occasionally, a “zone of natural expansion.” If a prior user’s trademark rights are based on an application that was filed before that of the subsequent user’s application, then the prior user would obtain nationwide priority rights to use the trademark.

Priority is Significant

Once a trademark user is able to establish the date of his/her use, he/she is almost always guaranteed to have the exclusive rights to use that trademark in the geographic location of current use.  It is still essential, however, to gain federal trademark registration because the date of priority becomes the date the application was filed, which is also the date of nationwide constructive use. The best way to obtain the broadest and most powerful legal protection for a trademark is to begin to use the trademark as early as possible, and then immediately file a federal trademark application.