Trademark Priority

In the United States, trademark rights generally belong to the person who first uses the mark in commerce (first-use rule). The rightful owner of a mark will typically be the person who first offers goods and services under the mark for sale. As such, merely coming up with a mark without using it in commerce for defined goods and services does not provide priority rights to that mark.

Common law trademark rights are automatically established locally when a mark is first used in commerce for defined goods and services. A federal trademark registration identifies a first use in commerce date that specifies the priority date when nationwide federal protection is afforded to the mark for the described goods and services.

A critical difference between trademarks and patents is that trademarks require using the mark in commerce, while patents do not require using the claimed invention.

U.S. Use-Based Applications

A mark's first use in commerce date may be earlier or later than the filing date of a U.S. federal trademark registration application for that mark.

The earlier filing date of a U.S. trademark application can be used as the priority date for a subsequently filed foreign trademark application. To claim priority to the earlier U.S. trademark application, the later foreign trademark application must be filed within six months of the U.S. trademark application and must include a "priority claim" referencing the corresponding U.S. trademark application.

An applied-for mark is searched at the USPTO based on the filing dates of the corresponding applications. Specifically, an examining attorney searches for confusingly similar marks whose filing dates are earlier than the filing date of the applied-for mark.

In these searches, the alleged use date in each application is not compared to the alleged use date of the applied-for mark. This sets up a scenario where an application for a mark with an earlier filing date and a later use date may be cited against an application for a confusingly similar mark with a later filing date and an earlier use date. To overcome the application with the earlier filing date, the application with the earlier use date must wait for the publication of the allowed application with the earlier filing date to oppose or cancel that application based on an earlier use date.

U.S. Intent-To-Use Applications

An important exception to the first-use rule in the U.S. is intent-to-use applications for trademarks. An intent-to-use (ITU) trademark application can be filed before a mark is used in commerce, but it must be based on a genuine intent to use the mark in the future for specific goods and services. The ITU application goes through the same examination process as a use-based application without having to demonstrate use at the time of filing. If the ITU application is approved, the applicant must then submit a statement of use to demonstrate actual use of the mark with the goods and services listed in the application. If the ITU application becomes a registration, the filing date of the ITU application will be considered the first-use date of the registration.

Essentially, an ITU application allows you to secure a trademark that has been examined and approved by the USPTO before actually using the trademark in commerce. Once allowed, a statement of use must be filed within a specified period for the approved application to become an enforceable federal registration.

Foreign Trademark Applications

When a foreign trademark application is filed, it may claim priority to an earlier application filed in the U.S. for the same mark. Likewise, a U.S. trademark application may claim priority to an earlier filed foreign application for the same mark. This priority is provided under the Paris Convention, which established a framework for protecting intellectual property rights across 170 member countries. According to this framework, a later trademark application filed in one member state must be submitted within six months of an earlier corresponding trademark application filed in another member state to claim priority back to the earlier application.

While a foreign trademark application may still be filed more than six after the filing date of the U.S. trademark application, it can no longer claim priority to that U.S. application.  

Once a U.S. trademark application has been filed, an applicant may file an international application under the Madrid Protocol based on that U.S. application. The Madrid Protocol established a framework that simplifies and streamlines the process of registering and managing trademarks across 110 member countries. The international application must be filed within six months of the filing date of the corresponding U.S. application to claim priority back to that U.S. application.

Filing Dates vs. Use Dates

The filing date of a trademark application matters when determining priority. A trademark application with an earlier filing date takes precedence over an application for a confusingly similar mark with a later filing date, regardless of their use dates. The alleged use date in a trademark application does not factor into the examination of the mark. Still, it becomes relevant in trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board (TTAB).

During opposition proceedings, third parties can challenge an allowed mark based on a confusingly similar mark with an earlier use date. Cancellation proceedings enable third parties to challenge a trademark registration based on a confusingly similar mark with an earlier use date. Alleged use dates determine the seniority between confusingly similar marks in proceedings at the TTAB.

It's important to note that the use date alleged in a trademark application must be supported by competent evidence. Additionally, the filing date of a trademark application that matures into a registration may be considered constructive use of the mark, providing the registered mark with a priority right without the need for competent evidence, as long as the mark was used in commerce as of the filing date.

Use In Commerce v. Analogous Use

The general rule is that the rightful owner of a trademark is the one who first used the mark in commerce. However, the owner of a mark may not yet be able to show use in commerce for that mark.

Analogous use involves activities related to a trademark that, while falling short of actual use in commerce (e.g., affixing the mark to goods sold), may still contribute to the public's awareness and recognition of the mark. These activities are steps toward actual use in commerce and can sometimes establish priority over others trying to register the same or a similar mark.

Use in commerce requires that the trademark is used in the ordinary course of trade, meaning that the goods or services bearing the mark are sold, shipped, or delivered in commerce. Actual use in commerce is necessary for federal trademark registration.

Analogous use refers to pre-sale activities that create public awareness of the mark, even before selling goods or services under the mark. While analogous use may establish priority, it is not a substitute for actual use in commerce.

Analogous use can help an applicant claim an earlier date of priority in case of a conflict with another party attempting to register a similar mark. For priority, the applicant must prove that their promotional efforts preceded the other party's use or application filing. In the case of an Intent-to-Use (ITU) application, analogous use before the ITU filing date can be relevant in priority disputes.

How TCP Law Can Help

For assistance with trademark priority or with any other trademark issue, please contact TCP Law at info@tcplawfirm.com or 917-612-1059.