Common Law Trademark Rights and Priority of Use

There are many benefits to federally registering a trademark. It discourages infringement, provides national protection, creates nationwide constructive notice of registration, provides a presumption of validity and ownership, enlists the USPTO to enforce the owner’s rights, and so on. But ownership of a federal registration does not, however, standing alone resolve who has the right to use the mark. Like many things in law, it’s complicated.

Common Law Trademark Rights

Unlike many countries, in the US trademark rights are earned through use—not registration. A company gains a degree of trademark protection in its geographic area (and potentially in its “natural zone of expansion”) simply by being the first to use a mark in commerce in connection with its goods or services. These rights are known as “common law” trademark rights and attach without registration with the USPTO.

Trademark Priority: Senior User Versus Junior User

Under common law, trademark rights within a certain geographic territory are based on priority of use of a mark within that territory. If a company with a trademark registration is not the first user of a mark in a territory, the unregistered prior user may have superior trademark rights, at least in that territory. The first user is often referred to as the “senior user” and the second or later user is the “junior user,” regardless of registration status. Determining who has rights in this scenario is often complicated, requiring careful evaluation of facts and law.

The senior user of a mark has superior rights as compared to a junior user that is using a confusingly similar mark (a) in connection with the same or similar goods or services (b) within the same geographical area or (in some jurisdictions) within the senior user’s natural zone of expansion. Common law rights do not, however, protect the senior user outside its natural zone of expansion against a junior user who innocently adopted a confusingly similar mark in a remote area, without knowledge of the senior user’s mark.

This trademark principle is commonly referred to as the “Tea Rose-Rectanus” doctrine, taken from a century-old Supreme Court decision. At its most basic, this prior use doctrine means a senior user in one geographic market cannot prevent a junior user’s good-faith use of the mark in a geographically remote area if the senior user’s mark is not known to consumers in the junior user’s geographic market.

While owning a federal registration provides substantial benefits, registration alone does not conclusively establish the exclusive right to use the mark. Senior users are afforded significant protection under trademark law that should not be overlooked in a trademark dispute.

If you have a trademark dispute, contact us to see how we can help.

Griffith Barbee PLLC

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