Priority Determinations in Trademark Law - Constructive Use Priority
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Discover the complexities of establishing priority of use in trademark disputes, including constructive use priority, common law use, and use analogous to trademark use, and how they impact proceedings before the TTAB and federal courts.
Priority Determinations in Trademark Law - Constructive Use Priority
Priority of use often becomes a fiercely contested matter during proceedings before the Trademark Trial and Appeal Board (TTAB). In some cases, where the goods and services are clearly related and the marks are highly similar, the only dispute revolves around establishing priority. Parties involved in trademark disputes can establish their priority rights based on various grounds, including constructive use priority, common law use, and foreign rights combined with a trademark application in the United States that grants the applicant priority based on the filing date of the foreign application.
Constructive use priority, governed by Section 7(c) of the Trademark Act, applies when a trademark application is filed on the principal register, whether based on actual use or a genuine intent to use. In such cases, the filing date of the application is considered as constructive use of the mark in connection with the goods or services specified in the application. There are only three circumstances that can overcome constructive use in a priority dispute: (1) prior common law use in the United States before the applicant's filing date at the United States Patent & Trademark Office (USPTO), including use akin to trademark use; (2) an earlier filing date at the USPTO; or (3) a foreign application filed before the U.S. application's filing date and within six months of the foreign filing date, with a subsequent U.S. application filed under Section 44(d) at the USPTO.
One important factor to consider when relying on constructive use priority is that the trademark application must eventually result in registration. If the application does not mature into a registration, constructive use priority will not apply. It's worth noting that there is a significant distinction between TTAB proceedings and federal court proceedings regarding constructive use issues. The TTAB can issue a decision favoring a party based on constructive use priority before the registration is granted, while a federal court in an infringement action lacks jurisdiction to hear a claim based on constructive use unless a registration has been issued or alternative common law rights can be asserted. Additionally, the Second Circuit has determined that it will not issue an injunction against an intent-to-use applicant if the plaintiff commenced use after the intent-to-use applicant's filing date. The intent-to-use applicant will be given an opportunity to perfect their rights and complete the registration process.
An often overlooked form of use, known as use analogous to trademark use, can invalidate a constructive use priority date. The TTAB has held that although use analogous to trademark use may not qualify as a basis for a use-based application, it can prevail in a priority battle. For instance, in the case of Shalom Children's Wear Inc. v. In-Wear A/S, the TTAB determined that the opposer's pre-sales activities under the mark constituted use analogous to trademark use, even though no sales occurred until after the applicant's filing date. Other examples of use analogous to trademark use include use in advertising, trade shows, promotional materials, catalogs, trade publications, direct mail solicitations, or any other form of public use intended to reach relevant consumers.
It is important to note that this type of use cannot serve as the basis for a registration application, but it can establish sufficient priority rights to oppose or cancel another party's registration if the use creates an association in the minds of consumers between the mark and the party's goods and services. Use that is deemed "token use" or titles of single creative works have been held not to qualify as use analogous to trademark use. On the other hand, trade name use (any name used by an individual or entity to identify their business) has been recognized as a form of use analogous to trademark use.
Contact an Experienced Trademark Attorney
If you need legal advice regarding your trademark rights, assistance with trademark prosecution, or representation in a domain name dispute, contact Wilson Whitaker Rynell. Our team of trademark lawyers has extensive experience in all aspects of trademark and copyright law, including the filing of trademark applications and representing clients in defense or prosecution before the Trademark Trial and Appeal Board.
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