Trademarks and Priority: What You Need to Know

We are often asked by our customers whether they can register a trademark and then use that registered trademark to force someone else to stop using the same. The answer, it depends.

Many fail to understand how trademark rights are acquired. In general you can acquire trademark rights in one of two ways: (1) use; and/or (2) filing.

First, simply by using a trademark in commerce an entity acquires rights in that trademark in connection with the goods or services with which it is used.

Second, whether or not a trademark is in use you may also acquire rights in the trademark by filing and subsequently registering the same with the U.S. Patent and Trademark Office.

As such, merely registering a trademark with the U.S. Patent and Trademark Office will not give you superior rights to a trademark over another if that other used the trademark in commerce prior to your use or filing of the same with the U.S. Patent and Trademark Office.

So the determination of who retains priority of use in a trademark dispute is often a complex factual analysis. You cannot merely assume that if you were the first to register a trademark you actually have superior rights to all others in that trademark. Due diligence must still be conducted to make sure your use date or filing date predates the other party sufficient to secure your priority of use and, accordingly, superior rights in a mark.

The Trademark Company