Trademark priority essentially means that when there are competing businesses in the same geographic market seeking the rights to a trademark, the first business that successfully applies for it will have the exclusive rights to it. This rule is often referred to by legal experts as "priority of use." This rule is often used by the Trademark Trial and Appeal Board to establish trademark priority in contested cases.

Establishing Trademark Priority

Establishing your trademark is a multiple-step process to ensure that you retain the definitive rights over the use of the trademark. Establishing trademark priority is vital, even if the business isn't registered, as they can still hold the trademark rights under the law and challenge any other company that may infringe on it.

To establish trademark priority, it is important to use it in commerce before anyone else does. There are two primary satisfaction requirements that will need to be met.

  • "Using" - The first step is to use the trademark continuously. This simply means that you cannot use the trademark sporadically but will need to use it in the daily operation of the business. When a business does not use the mark consistently, the USPTO may end up considering it abandoned. Abandonment can be confirmed when a business fails to use the mark for up to three years. If this occurs, another business could earn priority over yours.
  • "Commerce" - Next, the trademark will need to be used during the normal course of business. This requirement means that simply registering it with the USPTO will not gain your priority. It must be used during the course of daily business. The USPTO defines this requirement as "use in commerce." To meet this requirement, you can include your trademark on packaging, paperwork, advertising, service marks, or boxes.

Trademark Priority and Location

Typically, trademark ownership and priority will depend on when you began using the trademark, though there are some situations where a newer use of the trademark can gain priority. When differentiating who uses the trademark first and second, the first user is often referred to as the senior user and the second as the junior user.

Geographic Location

The geographic use of a trademark is also important for establishing trademark priority because trademark rights can be enforced either through local law or federal law. The rights to priority can change depending on which laws it is being heard under and the precedents being used in each case.

An example is Business A has several stores in Detroit. Business B is a nationwide store chain that uses the same trademark as Business A. Business B wishes to open some of their stores in Detroit and Business A wants to open a store in nearby Indiana. Which business has priority?

In the first instance, Business A could try to defend their trademark rights under local law. This means they can try to ban Business B from setting up shop in the Detroit area and maybe even the entire state of Michigan. In the second instance, Business B would have the right to defend their trademark under federal law and prevent Business A from opening a store across state lines.

If you plan only to use trademark rights within your state, it best to limit those rights to the geographic region so that they would fall under the local trademark laws. Though if you plan to utilize your trademark on a national level, you should regulate your trademark with the USPTO to gain federal protection.

Common Law Priority vs. Federal Law Priority

Knowing the difference between common law priority and federal law priority is important in protecting your trademark as well as protecting your ability to expand across state lines if that is the desired result.

  • Common law priority - To establish common law priority, all you will need to do is use the mark during commerce. After using the mark for the first time and maintaining use, you have established rights within your geographic location.
  • Federal registration - If you wish to establish formal ownership of the trademark on a national level, you will need to register the trademark with the USPTO.

If you need help with trademark priority, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.