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Trademark Priority

You may have heard the phrase “it’s the economy, stupid,” coined by Bill Clinton’s strategist James Carville as a maxim for campaign staffers to keep in mind so they would stay focused on the issue that matters most to voters. When it comes to property law, and that includes intellectual property such as trademarks, you could use this same maxim, except replace the word “economy” with “priority.” In any kind of dispute over trademark rights, priority plays a key and often deciding role. But what is it?

What is Trademark Priority?

Priority is the word for the earliest point in time when a party can claim rights to their asserted trademark. If you analogize it to claiming property rights in land, your priority date would be when you first set foot on the land and staked your claim. If nobody else had already laid claim to that land, it could belong to you by virtue of your claim. Of course, in today’s world this doesn’t work because somebody else already owns just about every inch of land there is. But at some point in history (or pre-history) this was how it was done.

Think of domain names. If you are the first person to register a URL with a domain registry, you become the owner of that domain name. How? Because you were the first to register it, the first to stake your claim.Again, this is the property law concept of priority.

If you are the first to use a trademark, you are the one with priority in any trademark legal conflict. But scenarios can get complicated. Here is a hypothetical for illustrative purposes:

Bob was the first to use the trademark GWAMPS, for a natural squirrel repellant product, in 2016, inLas Vegas, NV. Melvin, in New York, NY, commenced using the same mark in 2018, and applied to register the GWAMPS trademark with the USPTO on January 6, 2020. Bob, who didn’t ever consult with a lawyer, filed his application to register GWAMPS with the USPTO on January 7, 2020.

In this scenario, the USPTO would refuse Bob’s application even though he was the first user of the mark, because Melvin was the first to file, and absent other evidence, the USPTO determines priority by filing date. Bob could, however, oppose Melvin’s application and prevail, basedon the fact that he was the first user of the mark, and on that basis is the one with priority and entitled to national registration of the trademark. In this case, however, Bob’s federal registration rights would not include the market area in New York where Melvin had been selling his GWAMPS brand squirrel repellant since 2018. Melvin, however, would be barred from expanding his use of the trademark beyond the geographical area where he was already using the trademark on the date that Bob’s application matured into a registration. As of Bob’s registration date. Melvin’s market area for GWAMPS would be “frozen.”

There are many other potential priority scenarios. It can get complicated, but the takeaway is this: if you’re the first to use a trademark, you have priority. If you are both the first to use and the first to file for federal registration, your priority will be nationwide. Generally speaking, business owners will be well served by promptly filing for federal registration of their trademarks.

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To speak to Trademark attorney Tom Wilentz, please call 914-723-0394.

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Thomas M. Wilentz is a published writer on intellectual property law who has been practicing trademark law for 18 years. His firm, Thomas M. Wilentz Attorney at Law, PLLC, was founded in 2003 and since then has helped clients from all over the USA, as well as from Canada, China, the UK, Australia, Malaysia, Mexico, Singapore and many other countries.