Trademark Priority: When Should I Register My Trademark?

Trademark Priority: When Should I Register My Trademark?

In the United States, you get trademark rights by using your trademark in commerce.  When there is a dispute over a trademark, a major issue is determining which party had trademark priority.  In other words, “who established rights first?”  You should file your trademark application as early as possible to prevent a situation where someone else can establish trademark priority.  Here are a couple of real-life examples of what can happen if you wait to file your trademark application.

Facing Opposition/Cancellation Costs

Filing your trademark application early and establishing trademark priority is very important.  A client I recently talked to found this out the hard way when she decided to get around to filing.  She had an online cosmetics store with a very distinctive name.  The store had been up and running for over a year.  When she did a TESS search she was shocked to find someone had recently filed for an almost identical name, also for cosmetic products.  The fact that the name was so unique makes me think that this applicant probably copied off of my client’s name.

Clearly, my client had trademark priority in this situation.  So no problem, right?  Wrong.  Even though my client had priority, there was no way to wave a magic wand and make this other application go away.  My client could certainly oppose the application, or try to cancel it after registration.  However, these processes can be costly.  And they would have been completely unnecessary had the client filed an application at any time before this application was filed.

It is also important to look at the legal risks of not challenging this application.  If this applicant registers the mark, my client could be “locked in” geographically.  This is because a federal trademark registration grants nationwide rights to a trademark.  My client has established common law trademark rights, but in a limited geographic area.  So challenging this application might be expensive in the short term, but failing to do so might cost her in the long run.  Neither is a situation you want to be in with a new business.

Other Users Popping Up

Another client spoke to me about registration over 15 years after first adopting her business name.  She had established trademark priority and then some.  But after all that time she decided it would be wise to conduct a trademark search to see what else was out there.  After that, she was ready to finally file the trademark application.  Except that she wanted to wait just a few weeks longer.  Well, several weeks turned into several months, and we didn’t move forward with an application.

The next email that I received was telling me that another company had adopted the exact same name!  Obviously, with trademark priority going back 15 years we could force them to change it, right?  Well unfortunately, we could not.  My client’s trademark rights were based only on common law, and therefore were not nation-wide rights.  Therefore, there was no basis to claim that the other business was infringing my client’s trademark rights.

Had my client filed a trademark application in the 15+ years before this business opened under the same name, we could have told them to change it.  However, they now have just as much of a right to use the name as she does, as long as they stay out of the same market.

Establishing Trademark Priority

What is the common denominator in these two examples?  The business owner waited to file their trademark application until it was too late.  I recommend performing a trademark search and then filing an application as early in the process as you can to avoid these issues.

One of the easiest ways to make sure you have trademark priority is to file your application on an intent to use basis.  The intent to use trademark application allows you to file and lock in your trademark priority before you start using a trademark.  All other methods of  getting  trademark rights require use of the mark in commerce.  And you will have to show use of your mark before you can gain rights here.  However, once your registration issues, your rights will date back to the filing date of your intent to use application.

Are You Ready to Establish Your Trademark Priority?

Whether you are starting your business in a year or have been going strong for decades, you need to register your trademark with the U.S. Patent & Trademark Office.  If you want to try and make sure your trademark rights are locked in, please call me at (314) 479-3668, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.