A determination of trademark priority is often how the United States Patent & Trademark Office (USPTO), courts and businesses settle rights over trademark disputes. Trademark priority refers to the principle that trademark rights typically belong to the first person or entity to use the mark in commerce. The entity or person who first sells goods or services under a particular mark will generally be deemed the rightful trademark owner. Priority of use is typically more important than priority of registration; but there are exceptions. The principle of trademark priority is based on the idea that the first person to use a mark in commerce has established a level of goodwill and reputation in the market and that it would be unfair to allow someone else to register the mark and take away that goodwill and reputation.
Defining the Terms
The first user of a trademark is often referred to as the senior user or prior user and the second or subsequent user of the trademark as the junior user. A senior filer is obviously the person or entity that files first for a trademark registration and a junior filer is a person or entity that files for a trademark application after the senior filer. 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.
Trademark Application Filing Date
Although trademark rights are generally awarded to the first user, there are certain advantages to being the first filer for a trademark registration. United States trademark applications are examined in the order that they are filed, not the date that the trademark was first used. When a trademark filing is submitted to the USPTO, the filing creates a federal priority date regardless of whether that mark is being used. When USPTO examining attorneys review trademark applications, they search for prior trademark filings of similar marks, but they do not compare alleged use dates in the trademark application. This means that if you apply for a trademark first with the USPTO, and a senior user files after your filing date, your application will be first in line. The senior-user/junior-filer must wait for the outcome of the first filed trademark application before the its application will process. If the trademark application is allowed and published for opposition, the senior user/junior-filed will have the burden to oppose the trademark application during the publication period – which is a significant advantage.
Constructive Use Trademark Priority
Constructive use priority is based on Section 7(c) of the Trademark Act. Constructive use trademark priority refers to the principle that a person or entity can establish priority for a trademark by making a good faith intent to use the mark in commerce, even if they have not yet actually begun using the mark in interstate commerce. Constructive use applies when a person or entity has made significant preparations to use a trademark in commerce, such as investing significant resources in developing a product or service to be associated with the trademark but has not yet begun to sell or offer that product or service to the public.
In the United States, for example, the federal trademark registration process allows for the filing of an “Intent-to-Use” (ITU) application with the United States Patent & Trademark Office (USPTO). An ITU trademark application is filed before the trademark is used in commerce and allows the applicant to reserve the trademark for a period of time while they prepare to use the trademark in commerce. Once the trademark is used, the applicant must file an “Allegation of Use” (AOU) or a “Statement of Use” (SOU) to show that the trademark is in use in commerce. If the applicant can prove that they had a good faith intent to use the trademark at the time the ITU application was filed and can prove actual use of the trademark before any other party, the applicant will be considered to have constructive use trademark priority. Put simply, the application must mature into an actual trademark registration for constructive use priority to apply.
Only a few circumstances can defeat constructive trademark use in a priority dispute: (1) common law use in commerce prior to the applicant’s ITU filing date at the USPTO; (2) an earlier filing date for an ITU application or an Actual Use application at the USPTO; or (3) a foreign application filed prior to the filing date of a USPTO ITU or Actual Use application and within three (3) months of the foreign filing date, a USPTO application is filed under Section 44(d).
Prior or Senior User vs. Junior Registered User
A registered trademark owner 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 by 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 or senior user’s rights are based on an application that precedes the subsequent user’s application, then the prior user may 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 trademark, 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 concept of nationwide constructive trademark use. Thus, to truly protect your trademark, 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 registration with the USPTO or file an ITU trademark application with USPTO.