Trademark Priority: Determining Who Was First
Trademark rights in the US generally belong to the one who was first to use the mark in commerce. Whoever was first to sell goods or services under a particular mark will typically be deemed the rightful trademark owner. This is known as trademark priority. There are some exceptions to the rule (see below). The most important thing to keep in mind is that trademark rights generally go to the first user, and not necessarily the first filer.
It’s important to note what does not matter when it comes to priority. Someone who merely coins a phrase or conjures up the notion to use a mark on certain goods does not get priority. Merely thinking of a name and what you might possibly do with it does not make you a trademark owner. This is one of the key distinctions between trademarks and patents. Patents do not require use. Trademarks do.
How Your Earlier US Priority Date Will Benefit Foreign Applications
If your US trademark application was the earliest application filed anywhere in the world for a particular trademark, then you can use your earlier US filing date as the “priority date” for foreign trademark application filed within a certain time period. To benefit from your US priority date, an applicant must file foreign applications within six months of the US filing date and have those foreign applications include a “priority claim” to the counterpart US application.
A US applicant may still file foreign applications after this 6-month period, but without the ability to claim priority.
Does Filing First Matter?
Absolutely. An earlier filing date provides a trademark applicant with many practical advantages.
Trademark Applications Are Examined Based on Their Filing Dates, and Not Use Dates
When USPTO trademark examining attorneys (USPTO trademark examiners are actually attorneys in contrast to patent examiners who have technical degrees, but not necessarily law degrees) review trademark applications, they search for prior filings of similar marks. Examining attorneys do not compare alleged use dates in the trademark filings.
That means that if you apply first for a trademark, and a senior user (someone who used the mark before you) files after your filing date, your application will be first in line. The senior-user/junior-filer must wait for the outcome your application before their application gets reviewed. And, if your application is allowed and published for opposition, the burden will fall on subsequent filers to oppose your application or cancel your registration.
How Intent-To-Use Applications Give Priority to Subsequent Users
Savvy trademark owners know there is a major exception to the first-user rule: it’s called the Intent-To-Use (ITU) application. Anyone with a real intent (“bona fide intent”) to use a particular mark in connection with certain goods or services may file an ITU application before any use has commenced. The ITU applicant will eventually have to follow up by filing a Statement of Use showing use in commerce of the mark on the goods or services identified in the application. If an ITU application matures into a registration, US law will treat the trademark owner as if they had begun using the mark in commerce on the ITU filing date.
How Foreign Trademark Applications Give Priority
An applicant who has applied for a trademark in a foreign country may file a US trademark application for the same mark. If the US application is filed within six months of the foreign filing date, the applicant may “claim priority” to the foreign application which means that the US application will get the benefit of the earlier foreign filing date.
When Do Use Dates Matter to the USPTO?
If filing first beats out subsequent trademark applicants, when would use dates ever matter? Use dates come into play in trademark oppositions and cancellations filed with the USPTO Trademark Trial and Appeal Board (TTAB). Oppositions involve pending applications which are timely challenged during the period in which a mark is published for opposition. Cancellations involve registered marks.
In a TTAB proceeding, a plaintiff can challenge a trademark filing on the grounds of likelihood of confusion and introduce evidence of earlier use in commerce. Of course, a challenger may face significant costs in mounting such a legal challenge.
Evidence of Trademark Priority
Dates of use alleged in a trademark filing must still be proven by competent evidence [see 37 CFR 2.122(b)]. However, the filing date of a trademark application that ultimately matures into a registration may be considered constructive use of the mark conferring a right of priority without need for further competent evidence, provided the applicant had actual use of the mark as of the filing date that was more than token use [see 15 USC 1057(c)].
What Trademark Owners Must Know and Do
If we had to boil all of this trademark discussion down to only two takeaways, they would be:
- Trademark rights are governed by who was first to use; and
- That being said, filing first will provide practical and potentially crucial advantages.
What is use analogous to trademark use?
In a contest to determine who has priority, the general rule is the rightful owner is the one who was first to use the mark in commerce. What if a trademark owner uses the mark to a lesser extent that does not meet the rigid usage requirements for supporting a trademark application? For example, can advertising and pre-sales activities help establish priority?
Known as “use analogous to trademark use,” this lower degree of trademark use may help establish priority if the extent of the usage was sufficient to create an association of the mark with the user’s goods or services. A significant impact must be made on the purchasing public. The evaluation of analogous use is fact intensive inquiry based on the specific situations of each case.
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