Trademark Priority in the United States

When entrepreneurs technology star dogs and other brand owners think about trademark priority they often mistake federal US registration priority with common law priority in the United States. In the United States common law priority is well recognized and holds legal weight. In the competitive world of business, establishing and protecting your brand identity is crucial. One of the fundamental principles that govern trademark rights in the United States is the concept of “priority.” Understanding the importance of priority in U.S. trademark law can help businesses secure their trademarks, avoid legal disputes, and maintain their competitive edge.

What is Priority in U.S. Trademark Law?

Priority in trademark law refers to the order of rights based on the timing of use or filing of a trademark. Essentially, it determines who has the legal right to use a particular mark in commerce. In the U.S., priority is generally based on the first use of the mark in commerce rather than the first to file for registration. This “first to use” system contrasts with the “first to file” system used in many other countries.

First to Use vs. First to File

In the U.S., the principle of “first to use” prevails, meaning that the rights to a trademark are established by the actual use of the mark in commerce. Here’s how it works:

1. First to Use: The first entity to use a trademark in commerce has priority rights over anyone who uses or files for the same or a confusingly similar mark later. This use must be bona fide, meaning it should be genuine and made in the ordinary course of trade.

2. First to File: While the U.S. primarily follows the “first to use” rule, filing a trademark application with the United States Patent and Trademark Office (USPTO) can provide significant benefits. An application can establish a constructive use date, which can be crucial in disputes.

Establishing Priority Through Use

To establish priority through use, a business must demonstrate the following:

1. Actual Use in Commerce: The mark must be used in a way that is visible to the public and associates the mark with the goods or services offered by the business.
2. Continuous Use: The use of the mark should be ongoing and continuous. Sporadic or token use may not suffice to establish priority.
3. Geographic Scope: The extent of geographic use can also play a role. While federal registration provides nationwide rights, common law rights are generally limited to the geographic area where the mark is used.

Benefits of Filing for Trademark Registration

While actual use can establish priority, filing for trademark registration with the USPTO offers several advantages:

1. Constructive Use Date: The filing date of a trademark application can serve as the date of first use, which can be critical in priority disputes.
2. Nationwide Protection: Federal registration grants nationwide protection, even if the mark is only used in a specific geographic area.
3. Legal Presumptions: Registration provides a legal presumption of the registrant’s ownership and exclusive right to use the mark.

Priority and Legal Disputes

Priority plays a crucial role in trademark disputes. When two parties claim rights to the same or similar marks, priority often determines the outcome. Here are common scenarios where priority is essential:

1. Opposition Proceedings: If someone files a trademark application that conflicts with an existing mark, the owner of the earlier mark can oppose the application based on priority.
2. Cancellation Proceedings: An existing registration can be challenged and potentially canceled if it can be proven that another party had prior rights to the mark.
3. Trademark Infringement Lawsuits: Priority can determine the rightful owner of a mark in infringement cases, impacting the ability to enforce trademark rights.

Understanding and establishing priority in U.S. trademark law is vital for protecting your brand and ensuring legal security. By prioritizing the actual use of your mark in commerce and considering the benefits of federal registration, you can safeguard your trademark rights and avoid potential disputes. For businesses navigating the complexities of trademark law, consulting with experienced trademark attorneys is essential.

Trademark Priority Legal Consultation

Securing your trademark rights is critical for your business’s success. At [Your Law Firm], we specialize in trademark law, helping businesses establish priority, file for registration, and navigate legal disputes. Contact us today for a consultation and let us help you protect your brand. Reach out via our secure contact form or visit our website at www.techandmedialaw.com.

FAQs

Q1: What is priority in U.S. trademark law? Priority in U.S. trademark law refers to the order of rights based on the timing of use or filing of a trademark, determining who has the legal right to use a particular mark in commerce.

Q2: How does “first to use” differ from “first to file”? In the U.S., the “first to use” principle prevails, meaning the rights to a trademark are established by the actual use of the mark in commerce, whereas “first to file” grants rights based on the filing date of the trademark application.

Q3: What are the benefits of filing for trademark registration? Filing for trademark registration offers benefits such as establishing a constructive use date, granting nationwide protection, and providing legal presumptions of ownership and exclusive use.

By understanding these concepts and securing your trademark rights, you can protect your brand and ensure your business’s continued success.

Trademark Priority and Certificate of Registration

Under Federal Trademark Law, 15 United States Code 1057 (Section 7 fo the Lanham Act), a trademark has priority by prima facie evidence when a certificate of registration is issued. The law states under sub-clause (b):

A certificate of registration of a mark upon the principal register provided by this chapter shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the owner’s ownership of the mark, and of the owner’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate, subject to any conditions or limitations stated in the certificate.

Constructive Priority in US Patent and Trademark Office

While priority by registration is obvious to most entrepreneurs and technology startups seeking brand protection in the United States, constructive priority, covered in Section 7(c) of the Lanham Act, provides a substantial advantage to trademark owners who file a trademark application in the United States Patent and Trademark Office (USPTO) as early as possible, provided they have a bonafide intent to use the trademark, and take advantage of the federal constructive trademark priority law well recognized in United States federal courts.

Section 7(c) of the Lanham discusses trademark priority in these terms:

Contingent on the registration of a mark on the principal register provided by this chapter, the filing of the application to register such mark shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect, on or in connection with the goods or services specified in the registration against any other person except for a person whose mark has not been abandoned and who, prior to such filing—
(1) has used the mark;
(2) has filed an application to register the mark which is pending or has resulted in registration of the mark; or
(3) has filed a foreign application to register the mark on the basis of which he or she has acquired a right of priority, and timely files an application under section 1126(d) of this title to register the mark which is pending or has resulted in registration of the mark.

Nationwide Trademark Priority Rights

So as one can see in plain English, just the act of filing not registration provides nationwide priority rights in effect, on or in connection with the goods or services specified in the application or registration. This simple act of filing an application, provided it is valid and otherwise legal, vests a substantial advantage to trademark owners, because the effort required to file a trademark application is far less than priority by registration, typically requiring the services of an experienced priority attorney in California, New York, Texas, Malibu, Los Angeles, Hollywood, or any other region in the country since trademark law is federal law in most cases.

Common Law Trademark Rights

In a future post we will discuss common law trademark priority in the United Stated, codified in the Lanham Act as an exception to federal priority rights by way of common law use of the mark.

Trademark Analysis by Attorney

Brand priority is an area riddled by complexity and subject to many trademark litigation cases in the United States. When entrepreneurs, technology startups, and other brand owner or trademark applicants want to trademark priority analysis, consultation with an experienced trademark and tech startup attorney in Beverly Hills, Santa Monica, Los Angeles, or other major business hubs nationwide is highly recommended.