Westchester Women's Bar Association

Priority Determinations in Trademark Law - Constructive Use Priority

Priority of use is often a fiercely contested issue in proceedings before the Trademark Trial and Appeal Board ("Board Proceedings"). There are cases where the goods and services are admittedly related and the marks so similar that the only issue in dispute is priority. Parties in trademark disputes can base their priority rights on several grounds including, but not limited to constructive use priority, common law use, and foreign rights combined with a trademark application in the U.S. giving the applicant priority rights based on the foreign application's filing date.

Constructive use priority is based on Section 7(c) of the Trademark Act. It is applicable once a trademark application is filed on the principal register either based on use or a bona fide intent-to-use. Under these circumstances, the filing date of the application constitutes constructive use of the mark in connection with the goods or services identified in the application. Only three circumstances can defeat constructive use in a priority dispute: (1) common law use in the U.S. prior to the applicant's filing date at the United States Patent & Trademark Office ("USPTO") including use analogous to trademark use; (2) an earlier filing date at the USPTO; or (3) a foreign application filed prior to the filing date of the U.S. application and within six months of the foreign filing date, a U.S. application under Section 44(d) is filed at the USPTO.

The one contingent factor in relying on constructive use priority is that the trademark application must mature into a registration. If it does not, constructive use priority will not apply. It should be noted that there is one important distinction between Board Proceedings and Federal court proceedings when addressing constructive use issues. The Board can render a decision in favor of a party relying on constructive use priority before the issuance of its registration and delay entering final judgment.

However, a Federal court in an infringement action has no jurisdiction to hear a claim based on constructive use unless a registration has issued or unless there is alternative common law rights that can be asserted. Further the Second Circuit has determined that it will not issue an injunction against an intent-to-use applicant when the plaintiff has commenced use after the filing date of the intent-to-use applicant. The applicant will be given an opportunity to perfect its rights and to complete the registration process.

A type of use that is often overlooked, use analogous to trademark use, can defeat a constructive use priority date. The Board has held that although use analogous to trademark use may not in and of itself qualify as a basis for a use based application, it may win in a priority battle. See Shalom Children's Wear Inc. v. In-Wear A/S, 26 USPQ2d 1542, 1544 (TTAB 1991), where the Board held that the opposer's activities of pre-sales under the mark qualified as use analogous to trademark use even though no sales were made until after the applicant's filing date. Other examples of use analogous to trademark use is use in advertising, use at a trade show, use in promotional brochures, catalogs, trade publications, direct mail solicitation, or other publicly directed use that is meant to reach relevant consumers.

As mentioned above, this type of use cannot be used as a basis to apply for registration. However, it can create priority rights sufficient to oppose or cancel another's registration if the use is of such a type as to create in the minds of the target consumer an association between the mark and the party's goods and services. Types of use that have been held not to qualify as use analogous to trademark use is "token use" and titles of single creative works. A type of use that has been recognized as use analogous to trademark use is trade name use (any name used by a person or entity to identify his or her business). If you have questions concerning priority of use in connection with a trademark, please free to contact our office for a courtesy consultation with one of our trademark attorneys.

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