The United States gives trademark priority based on the use of the trademark, but the trademark benefits of federal trademark registration are still valuable. Having a federally registered trademark allows the USPTO to “police” your trademark by refusing a subsequent application that would conflict with your registered trademark. Registration also gives your trademark a presumption of validity, presumption of use of the trademark beginning on the date of the application, and creates nationwide constructive notice of trademark registration. However, even having a valid and incontestable registered trademark will not guarantee the exclusive right to use that trademark in every occasion. Because of this, it is important to understand the concept of priority in the context of trademark use and trademark rights.

Who is considered a prior user?

Common law in the United States gives trademark rights based on priority of use of the given trademark within a geographic location. This means that the first person to use a trademark, even if unregistered, has superior legal rights to use that trademark in a certain geographic location.

Ultimately, a prior user is an individual who either began using the trademark or applied for registration before the current applicant/registrant. The Lanham Act, Section 7(c), establishes that the filing date for a federal trademark application is the owner’s date of constructive use of the trademark. This establishes nationwide priority over everyone except someone who began using the trademark prior to the application date.

Prior User vs. Junior Registered User

A registered trademark user is given the exclusive right to use the trademark nationwide for the goods or services that are associated with the trademark. The only way for a prior user to defeat this presumption is if that individual can show they used the trademark prior to the registrant’s date of filing and if the prior user acquired common law rights of using the trademark in their geographic location. Since Section 22 of the Lanham Act gives the registrant nationwide priority, the prior user can only gain rights in the geographic location of use and in some instances, a “zone of natural expansion.” If the prior user’s  rights are based on an application that precedes the subsequent user’s application, then the prior user would be entitled to nationwide priority.

Trademark Priority is Important

Prior users are given significant protection under the Lanham Act. Once a trademark owner establishes use of the mark, they are almost guaranteed to have the exclusive rights to use the trademark in the given geographic location of use. However, it is still vastly important to have a federally registered trademark. A registered trademark gives priority of use as of the date of filing an application and comes with the important and valuable tool of nationwide constructive use.  Thus, to truly protect your mark, the best route to obtain the broadest and most powerful legal protection for your trademark is to begin use as early as possible, and immediately apply for federal trademark protection.

First To File

The filing date of a trademark application at the USPTO constitutes “constructive use” of the trademark and this date confers a “right of priority.” Filing an application grants the applicant priority trademark rights under the Lanham Act before actual use of a trademark in commerce. This filing date takes precedent over a later date of actual use in commerce under the common law (assuming the application is approved and matures into registration).