Key Takeaways

  • Trademark priority determines who has the legal right to use a mark when multiple parties claim it.
  • Priority is usually granted to the first business to use the trademark in commerce, not just the first to file.
  • Geographic scope affects trademark priority: common law rights are limited to where the mark is actually used, while federal registration extends rights nationwide.
  • “Frozen rights” protect an earlier user from being displaced by a later federal registrant, but expansion may be restricted.
  • Intent-to-use applications and international priority rules (Paris Convention) can affect who ultimately secures trademark rights.

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.

Intent-to-Use Applications and Priority

Trademark law allows applicants to file an intent-to-use (ITU) application with the USPTO before they actually use the mark in commerce. This gives the applicant a filing date that can serve as a constructive first-use date once the mark is registered, provided the applicant follows through and demonstrates actual use within the allowed timeframe.

An ITU application can be especially important for startups preparing to launch, as it protects their rights in advance. However, if another party can show earlier actual use of the mark in commerce, that party may still prevail in a priority dispute.

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.

Frozen Rights and Expansion Limits

A unique concept in trademark law is the doctrine of “frozen rights.” This occurs when a senior user establishes local common law rights but a junior user later obtains federal registration. The senior user may continue to operate in its established territory but may be barred from expanding into new markets where the federal registrant has rights.

For example, if a restaurant in one state has long used a mark but never registered it federally, and a later business registers the mark with the USPTO, the first restaurant can keep using its name locally but cannot expand nationally under that mark. This highlights the importance of securing federal registration early.

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.

International Priority Rules

Trademark priority is not only domestic—it can also extend across borders. Under the Paris Convention, a treaty signed by more than 170 countries, a trademark owner who files in one member country has six months to file in another member country while still claiming the original filing date.

This international “priority claim” can be crucial for businesses expanding abroad, ensuring they do not lose rights in foreign markets while preparing applications. Companies with global ambitions should carefully coordinate filing strategies to avoid losing priority to competitors.

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.

Litigation and Disputes Over Priority

Disputes over trademark priority are often resolved before the Trademark Trial and Appeal Board (TTAB) or in federal court. The TTAB frequently applies the “priority of use” rule to determine who first established rights. Evidence such as sales records, advertising, and product packaging are often presented to prove actual use.

In some cases, a later federal registrant may challenge an earlier user by claiming abandonment or lack of continuous use. Conversely, an earlier user can petition to cancel a later federal registration if they prove prior rights. Because these disputes are fact-intensive and highly technical, legal representation is often critical.

Frequently Asked Questions

  1. Does filing a trademark application automatically give me priority?
    Not always. Priority usually goes to the first to use the mark in commerce, though an intent-to-use application can secure an early constructive priority date once registration issues.
  2. What are “frozen rights” in trademark law?
    Frozen rights allow a prior local user to keep operating in their established area, even if another party registers the mark federally. However, expansion may be restricted.
  3. Can I lose my trademark priority if I stop using the mark?
    Yes. Non-use for three consecutive years is considered abandonment, and another business could claim priority over your mark.
  4. How does international trademark priority work?
    Through the Paris Convention, applicants can file in multiple member countries within six months of their first filing and still claim the original filing date.
  5. Where are disputes about trademark priority resolved?
    They are usually handled before the Trademark Trial and Appeal Board (TTAB) or in federal court, where evidence of first use is carefully examined.

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