Trademark-RightsTrademark Rights Under The Lanham Act And Based on First And Continuous Use

Trademark rights are based on first and continuous use of a trademark in commerce in connection with goods, products or services. The rationale for awarding trademark rights based on this is that the use establishes marketplace awareness, awareness results in goodwill, and the use of the trademark by others should thereby be restricted to the extent that it is likely to result in consumer confusion or deterioration of goodwill. An alternative way to establish protectible trademark rights is under the Lanham Act. Federal trademark rights go to the first to apply to register a trademark, with a bona fide intent to use it. The first to apply for federal trademark registration is awarded a formative ownership right as of the date of the federal trademark application.

Federal Trademark Rights Through Federal Trademark Registration

Once a good faith use of the trademark or service mark is made, or in some circumstances, intends to be made via an “Intent to Use” application, the applicant may be awarded nationwide priority dating back to the filing date of the application. However, these nationwide federal trademark rights are not absolute and are subject to common-law rights of any third-party trademark owner that has been using the mark prior to the federal trademark application filing date, and any prior registrations or pending applications by third parties at the USPTO.

Historically, trademark rights have been based on first and continuous use of a trademark in connection with goods, products or services, in commerce. An alternative basis, however, is found under Lanham Act.

Trademark Rights Through Use Alone

Trademark rights arise through the use of a mark in connection with an individual or business’ goods, products or services. These rights are commonly referred to as “common law rights.” Common law trademark rights are generally limited to the geographic area in which the trademark or service mark is used and, in certain circumstances, a zone of natural expansion into which the owner or business is likely to expand its use. Questions regarding the nature and amount of use that must be made of a trademark to establish common law rights are common. Even a small amount of use in commerce may sustain trademark rights if followed by continuous commercial use. However, every situation is different and an analysis of how much use is sufficient to establish common law rights will be fact specific.

Trademark Priority

The concept of trademark priority is important in trademark law because the prior user or federal trademark registrant of a trademark may have the right to exclude a newcomer from using the same or confusingly similar marks in the marketplace. A trademark owner’s priority date is easily determined when based on the filing of a federal actual use application or intent-to-use application.  It is very important to make sure that the “first use” and “use in commerce” dates are properly and truthfully made in order for a trademark owner to avoid a trademark opposition proceeding or a trademark cancellation proceeding.