Westchester Women's Bar Association

Priority Determinations Based Upon Common Law Use

In Trademark Trial and Appeal Board ("TTAB" or "Board") Proceedings, an Opposer may not have a trademark registration to rely on and if this is the case, then priority is in issue. Evidence will have to be produced to prove priority. To demonstrate priority at common law, the trademark statute requires that the mark be previously used in the United States (and not abandoned). The trademark statute (Section 45, 15 U.S.C, §1127) defines Abandonment in part as:

"When its use has been discontinued with intent not to resume such use. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. “Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark". Once the mark has been abandoned, resumed use represents a new and separate use of the mark that cannot be tacked on to the use before abandonment.

Having only to prove "use" in the United States to demonstrate priority is a relatively low threshold. The rule for establishing priority rights in a Board proceeding does not require "use in commerce" which is a necessary requirement for filing a trademark application based on use. Nor does Section 14 (15 U.S.C. §1064) of the statute require prior use throughout the entire U.S.

To establish priority on a likelihood of confusion claim, one party must prove that it owns a trademark or trade name previously used in the United States. The use may be actual use or use analogous to trademark use. Proprietary rights must be demonstrated and shown to cause a likelihood of confusion. Testimonial evidence may be sufficient to establish prior and continuous use if it is based on personal knowledge of the facts. The Opposer bears the burden of establishing its prior rights by a preponderance of the evidence. A single purchase order does not support prior continuous rights, See Westrex Corp. v. New Sensor Corp., 83 USPQ2d 1215, 1220 (TTAB 2007); Paul's Repair Shop Inc. v. Coalfield Services, Inc., Opposition No. 91216009 (TTAB 2016). Ongoing activity is required to show regular use of a trademark or recurring use in the U.S.

If a party is going to rely on common law rights in seeking to establish priority, these rights have to be pleaded in the Notice of Opposition or Cancellation Petition, in addition to a registration that may also be relied on if appropriate. The evidence in support of common law rights must be clear, specific, and convincing. In other words, there should be a demonstration that the mark has been used on a regular and recurring basis in conjunction with the goods or services at issue. If the evidence submitted is uncertain as to a specific day, month, or year the Board will resolve the uncertainty against the party seeking to prove the date.

If a party seeks to prove a date earlier than the one submitted in the trademark application, the party will face a heavier evidentiary burden than "preponderance of evidence". The proof will need to rise to the level of "clear and convincing evidence". The Board will not review prior use according to geographic regions. The Board will only decide which party demonstrated prior rights anywhere in the country and that party will prevail on the priority issue. Geographically restricted rights can only be reviewed in a concurrent use proceeding. A concurrent use proceeding may be instituted after the opposition or cancellation proceeding; even if you do not prevail in the prior proceeding. See Trademark Manual of Examining Procedure §1207.04 for more information on concurrent use registration.

A respondent in a Board may have defenses to assert that will defeat the allegations in the complaint. See our blog post entitled, Can A Laches Defense Justify A Dismissal Of A Petition To Cancel, for a detailed review of a precedential decision wherein the respondent successfully makes a laches case and the Board denies the petition to cancel. If you have questions concerning priority rights, please feel free to contact our office for a courtesy consultation.

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