Trademark Use in Commerce
In the United States, subject to one exception, trademark rights arise from use in commerce, regardless of whether or not the mark is registered. The first user of a mark generally takes priority over all subsequent users with respect to use of the mark in that market.
The first user of a mark in commerce, labeled the senior user, will have priority over the use of that mark by any other user, labeled the junior user, within the geographic area of the senior user’s use. However, as soon as a senior user files an application to federally register the mark, the senior user will have nationwide priority over any junior users of the mark, except for any junior users who were already using the mark in a geographically remote area as of the filing date of the senior user’s application.
Trademark Priority based on Registration
The one exception to the rule of priority based on use in the U.S. is that a prospective user can file an application for federal registration of a trademark on an intent-to-use basis. In that case, once the mark is used in commerce, the priority date will relate back to the date of the filing of the application, not the date of first use.
A federal trademark application should be filed immediately after a search is performed to ensure that the mark is not already in use. This is necessary to establish a nationwide priority date.
The following are required in order to claim priority based on an existing trademark registration:
- A true copy, a photocopy, a certification or a certified copy of the applicant’s trademark registration in the country of origin must be provided.
- A translation of the registration if not in English, signed by the translator, must be submitted.
- The applicant must verify that the applicant has a bona fide intention to use the mark in commerce.
- The scope of the goods covered by the U.S. application cannot exceed the scope of the goods or services in the foreign registration.
- If the applicant is not domiciled in the United States, the applicant must designate a domestic representative, which is a person residing in the United States that may be served notices or process in proceedings affecting the mark.