Part 1 of 6
Part 1: Trademark Priority and Trademark Distinctiveness
United States Trademark Law is unlike trademark law in foreign countries. Sometimes it can seem like federal trademark law is contrary to common sense. In this six part series, we look at some of the common issues that occur during a United States Patent and Trademark Office (USPTO) Federal Trademark Registration, some of which can be fatal to a pending application.
(1) Trademark Priority
While it may seem that trademark priority is simple to understand, a priority battle between two trademarks can be costly and complicated. First, U.S. trademark rights are based on use of a mark in commerce, not registration. In other words, the first person to obtain a federal registration of a trademark with the USPTO does not guarantee that owner an absolute priority or exclusivity over that mark. Under common law (law generated by judges instead of statutes) the date a trademark was first used in commerce has priority to use that mark in the geographic area the mark is being used. One of the biggest benefits in obtaining a USPTO trademark registration is that a federally registered trademark carries a presumption of nationwide priority of use, as of the date of filing a federal trademark application. Complications over priority battles typically arise when determining who has priority between two confusingly similar trademarks and one is a common law trademark, and the other is in the process of obtaining a federal trademark registration.

Say Bobby begins using a common law trademark on 1/1/15 in the Southeastern United States. Krystal files a federal trademark application with the USPTO, for a confusingly similar trademark on 2/1/15, which later becomes registered. At some point in the future, Bobby and […]