Understanding Use as Establishing Priority (Trademark) in U.S. Law

Definition & Meaning

The term "establishing priority" in trademark law refers to the principle that the first person or entity to use a trademark in commerce gains the exclusive right to that mark. This priority protects the original user from later users who may attempt to use a similar mark that could cause confusion among consumers. In the United States, priority is determined by actual use of the mark, unlike many other countries where the first to register the mark holds the rights to it. This difference can create complications for businesses that expand internationally, as they may face challenges from companies that registered similar marks in foreign jurisdictions.

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Real-world examples

Here are a couple of examples of abatement:

Example 1: A coffee shop in New York uses the name "Brewed Awakenings" starting in January 2020. They establish priority over that name in the U.S. However, a similar coffee shop in Canada registers the name "Brewed Awakenings" in March 2020. The U.S. coffee shop may need to pay a licensing fee to use the name in Canada.

Example 2: A tech startup launches a product under the name "Tech Innovate" in the U.S. in 2021. If a foreign company registers "Tech Innovate" in their country before the startup expands, the startup may face legal challenges and restrictions on using their own brand name abroad. (hypothetical example)

State-by-state differences

State Trademark Priority Rules
California Follows U.S. first-use rule.
Texas Follows U.S. first-use rule.
New York Follows U.S. first-use rule.

This is not a complete list. State laws vary, and users should consult local rules for specific guidance.

Comparison with related terms

Term Definition Key Difference
Trademark Registration The process of registering a trademark with the government. Registration grants rights based on filing date, not use.
Common Law Trademark Trademark rights acquired through use, not registration. Common law rights may be limited to specific geographic areas.

What to do if this term applies to you

If you're starting a business and plan to use a trademark, ensure you conduct thorough research to confirm that your mark is not already in use. If you plan to expand internationally, consider registering your trademark in other countries as well. For assistance, you can explore US Legal Forms for templates that can help you navigate trademark registration and protection. If your situation is complex, consulting with a legal professional is advisable.

Quick facts

  • Priority is established by first use in the U.S.
  • Trademark rights can be complicated when expanding internationally.
  • Licensing fees may be required to use a mark in foreign countries.
  • Common law rights exist based on use, not registration.

Key takeaways

Frequently asked questions

It refers to the right of the first user of a mark to claim exclusive rights to that mark.