Trademark priority is how we decide who has the right to use a given mark, like a logo, business name, or slogan.
Generally, the first person to use a trademark in commerce has trademark priority over later applicants for the same mark. Once an applicant has registered a mark, they have trademark priority over future applicants and users.
Trademark Priority by Use
You obtain trademark priority by being the first to use the mark in commerce. [i]
If you have been using a trademark longer than other users in your market, you have trademark priority over other users.
You have trademark priority in the geographic area where you’ve used the mark, even if you haven’t registered your trademark.
The first to use the mark in commerce is known as the “senior user.” Subsequent users are “junior users.”
Trademark Priority by Registration
Perhaps the easiest way to establish priority is be formally registering your trademark.
If you are the first to apply to register and use a certain trademark, you generally have trademark priority. However, you do not get priority over all other users — you only have priority over future users of the mark.
If there are pre-existing users of your trademark–such as smaller or local businesses who haven’t registered or conducted business over state lines–those trademark users can continue using the mark in their given market and geographic area.
The Priority Date
The date you file your trademark application is the “priority date.” For electronic submissions, it is the time the application was successfully submitted. For applications through the mail, the priority date is the date it was received by U.S. Patent and Trademark Office. [ii]
Once you’ve established your priority date through formal registration you have the exclusive right to use the trademark nationwide, with the caveat that any pre-existing users would be able to keep using the mark in their regional market.
Active Use Required
You must be able to show that you are actively using your trademark in commerce to claim trademark priority.[iii]
This means you are actively promoting your products and services using your trademark and you are currently marketing and selling your product or service across state lines.
If you haven’t yet used the trademark to market or sell a product or service, then you are not actively using it commerce and you may have a difficult time proving trademark priority.[iv]
If someone else tries to register your trademark, you need to show you have been using the mark in commerce since before that application was filed. [v]
Even if you are successful in showing that you have priority over the applicant, if you have not registered your mark you may be limited to using your trademark only in your regional market.
Example: Dairy King is a small family owned ice cream parlor operating solely in Indianapolis and has never applied to register “Dairy King.” When a national dessert chain opens it’s doors in Indianapolis and applies to register “Dairy King,” the family-owned Dairy King can show they’ve been actively using the mark in commerce but cannot bar the national chain from using “Dairy King” outside of Indianapolis.
Securing Trademark Priority
The best way to avoid a trademark dispute and secure your use of your trademark is to register it once you begin use. By registering, you secure a national exclusive right to use the mark.
You also firmly establish the priority date which may further assist you in any potential dispute.
Before registering your trademark, you may want to hire an attorney to conduct a trademark search to make sure there are no priority users of your mark.
A trademark search will tell you if a mark is already being used. This step will help you avoid any legal action, which could range from a simple cease-and-desist letter to opposition proceedings at the USPTO.