Priority Disputes - Common Law Rights vs. Federal Trademark Registration

Under U.S. law trademark infringement occurs when one party without authorization uses a trademark in connection with goods or services, and such use causes a likelihood of confusion, deception, or mistake about the source of the goods or services. To determine which party has senior rights to a trademark, there must be an analysis of who used the mark first in commerce and if appropriate, what rights may exist through registration. To establish priority a party must show proprietary rights in a trademark that cause a likelihood of confusion. For more general information on this topic, see the firm page entitled, Priority Determinations In Trademark Law.

The proprietary rights can arise from several scenarios, prior registration (with a constructive use date/filing date), prior use of a mark, prior use as a trade name, prior use analogous to trademark or service mark use, or other use sufficient to establish proprietary rights. Even a foreign trademark application date can be used as a constructive use date in a priority dispute if the U.S. application was filed within six months of the foreign application filing under §44 of the Trademark Act. See Karsten Mfg. Corp. v. Editoy AG, 79 USPQ2d 1783, 1787 (TTAB 2006). Keep in mind to prove proprietary rights; the party must demonstrate that the mark is distinctive either inherently or through secondary meaning. See Hoover Co. v. Royal Appliance Manufacturing Co., 238 F.3d 1357, 57 USPQ2d 1720, 1721 (Fed. Cir. 2001). In other words, you cannot establish proprietary rights in a mark that is merely descriptive or on the Supplemental Register of the USPTO, without a showing of secondary meaning.

Proving priority of use can be based on intrastate use. Rules governing priority are different than the rules required to support a use based federal registration (technical trademark use). McCarthy states at Section 20:17 that "In order to establish priority of use in a mark, opposer need not prove priority of use in interstate commerce. Proof of prior and continuous use in intrastate commerce is sufficient to preclude registration". See Panda Travel Inc. v. Resort Option Enters. Inc., 94 USPQ2d 1789, 1794 (TTAB 2009). See also Blast Blow Dry Bar LLC v. Blown Away LLC d/b/a Blast Blow Dry Bar, Opposition No. 91294769 (January 2, 2014).

However, if a party is attempting to prove use analogous to trademark use for priority purposes, a third standard is applied. The analogous use standard centers around how the activities involving use of the mark impacted the public. The prior use must create an association in the minds of the purchasing public, between the mark and the goods or services. There must be a substantial impact on the purchasing public to demonstrate use analogous to trademark use. It is critical to know the types of proof needed to meet each of these respective standards under trademark law.

In reality, what does this mean? If there is a prior user and a junior user with a registration less than five years old, the registrant will receive the benefits of the presumptions granted under the law, but the presumptions can be rebutted. The prior user must be able to show the mark was used before the registrant's date of filing, and common law rights were acquired in a certain geographic area. The prior user's rights will freeze once the registration issues (to the scope of rights it possessed as of the date of the application filing). If the prior user can show prior use before the filing date (even if it is only intrastate use), an opposition or cancellation proceeding can be filed. If the prior user is successful and the registrant's mark is canceled or the applicant's application is refused, then the parties' trademark rights are based on their respective common law rights. Each party may have common law rights in different geographic territories. Under the same scenario, if the registrant's mark is over five years old, the prior user cannot cancel the mark under Section 14 of the Trademark Act (because of the incontestable status) at the Trademark Trial and Appeal Board ("TTAB" or the "Board). However, the prior user could theoretically be granted an injunction in its territory in federal court even though the mark has incontestability status.

Prior users are afforded important rights under trademark law. These common law rights must be considered when clearing marks and if a trademark dispute arises. If you have questions concerning trademark priority, please contact the firm for a courtesy consultation.