Priority of Use

Definition

Priority of use is a fundamental concept in trademark law that determines which party has the superior right to use a particular trademark. It establishes the order of precedence between competing claims to the same or similar marks based on the date of first use in commerce.

5 Must Know Facts For Your Next Test

1. The first party to use a trademark in commerce generally has priority and superior rights over later users, even without federal registration.
2. Priority of use can be established through actual, continuous, and exclusive use of a mark in the marketplace, regardless of registration status.
3. Federal trademark registration provides nationwide priority, whereas common law trademark rights are limited to the geographic area of actual use.
4. Subsequent users of a confusingly similar mark can be found liable for trademark infringement if the prior user's mark has priority of use.
5. Priority of use is a critical factor in assessing likelihood of confusion and determining which party has the stronger trademark rights.

Review Questions

• Explain how priority of use establishes trademark rights and impacts the analysis of trademark infringement.
  • Priority of use is the foundational principle that determines which party has the superior right to use a particular trademark. The first party to use a mark in commerce, even without federal registration, generally has priority and can prevent later users from using a confusingly similar mark. This priority of use is a key factor in assessing likelihood of consumer confusion, which is the legal standard for trademark infringement. If a later user's mark is found to be likely to cause confusion with the prior user's mark, the prior user's priority of use can form the basis for a successful infringement claim.
• Describe the differences between common law trademark rights and federally registered trademark rights in the context of priority of use.
  • Common law trademark rights are established through actual, continuous, and exclusive use of a mark in commerce, without formal registration. These rights are limited to the geographic area where the mark has been used. In contrast, federal trademark registration provides nationwide priority, granting the registrant superior rights over later users, even if the registrant was not the first to use the mark. However, priority of use remains a critical factor, as the first party to use a mark in commerce, whether or not they have federal registration, generally has the stronger trademark rights. The interplay between common law and federal trademark rights, and their respective priority, is a key consideration in analyzing trademark infringement.
• Analyze how priority of use can impact the outcome of a trademark infringement lawsuit, particularly when the parties have used the mark in different geographic regions.
  • In a trademark infringement lawsuit, the priority of use between the parties is a crucial factor in determining the outcome. If the plaintiff can establish that they were the first to use the mark in commerce, even without federal registration, they may have superior rights over the defendant's subsequent use of a confusingly similar mark. This is true even if the defendant's use is in a different geographic region, as the plaintiff's common law trademark rights can extend beyond their actual area of use. However, if the defendant can show that they were the first to use the mark in their particular geographic market, they may be able to establish priority and avoid a finding of infringement. The interplay between the parties' priority of use and the scope of their respective trademark rights is a critical analysis in resolving trademark disputes.

Related terms

Trademark Infringement: Trademark infringement occurs when one party's use of a trademark causes consumer confusion with another party's prior trademark rights.

Likelihood of Confusion: The legal standard used to determine if one trademark infringes on another, based on whether consumers are likely to be confused about the source or sponsorship of the goods or services.

Common Law Trademark: A trademark that is established through actual use in commerce, without formal registration, and provides limited geographic rights.