[E-trademarks] Priority of common law user over senior applicant/registrant

Thu Oct 31 18:02:10 UTC 2024

I think you first need to know—if B has the senior application, is there time for A to oppose or file a cancellation petition based on priority of use?  If not, and assuming other factors like fraud are not present (e.g., B knew of A’s existence when it filed its application), then I think A is locked into whatever territory it had at the time of B’s filing.  Conversely, if A is able to successfully challenge B’s registration based on priority, B should still be able to defend its use in whatever geographic area it was using the mark under 33(b)(5).

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of daniel--- via E-trademarks
Sent: Thursday, October 31, 2024 10:56 AM
To: Oppedahl Carl <e-trademarks at oppedahl-lists.com>
Cc: daniel at keganlaw.com; Geyer, Laura T. <ltgeyer at vorys.com>
Subject: Re: [E-trademarks] Priority of common law user over senior applicant/registrant

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Result likely depends on whether A, or B, apply for Concurrent registration, and when the
explicit Concurrent request is made, before or after B registration issues. Etc.

Daniel Kegan
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On Oct 31, 2024, at 10:34 AM, Tara Aaron-Stelluto via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:

Re-upping this old thread because it’s good context for my question. The Fish article linked below is super helpful in sorting out a lot of common law priority questions, but not this one.

A (Senior User) begins using the mark in one geographical area. Does not register. B begins using the mark in a remote geographical area about a decade later, and applies for registration. A applies for registration after B.

I think the way this works is that B is still entitled to at least Section 33(b)(5) defense and can at least use the mark in its geographical area.  What I can’t figure out is whether B’s registration will change that and allow B to expand, while freezing A’s territory. And also whether this doesn’t matter because A can still successfully oppose B’s registration.

?

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> on behalf of Dale Quisenberry via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Date: Tuesday, March 21, 2023 at 1:54 PM
To: for trademark practitioners <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Dale Quisenberry <dale at quisenberrylaw.com<mailto:dale at quisenberrylaw.com>>, Geyer, Laura T. <ltgeyer at vorys.com<mailto:ltgeyer at vorys.com>>
Subject: Re: [E-trademarks-L] Priority of common law user over senior applicant/registrant
Thanks for the article, Tom.  Well written and very informative.  Much appreciated.

Dale

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> on behalf of Tom Vanderbloemen via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Date: Tuesday, March 21, 2023 at 11:48 AM
To: for trademark practitioners <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Tom Vanderbloemen <tom at vanderbloemenlaw.com<mailto:tom at vanderbloemenlaw.com>>, Geyer, Laura T. <ltgeyer at vorys.com<mailto:ltgeyer at vorys.com>>
Subject: Re: [E-trademarks-L] Priority of common law user over senior applicant/registrant
There was a previous discussion in this forum about concurrent use registrations, and while concurrent use registrations are not common, the issues about senior common law user v. junior registrant are.  We wrote about this in an article for the ABA Forum on Franchising, getting into cases like Dawn Donut, etc.  The article is “The Untold Story of the Concurrent Use Trademark Registration,” and it is in the Fall 2021 volume of the Franchise Law Journal.  If you are interested and can’t find the article online, please feel free to email me attom at vanderbloemenlaw.com<mailto:tom at vanderbloemenlaw.com>.

Thanks!

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> on behalf of Geyer, Laura T. via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Date: Tuesday, March 21, 2023 at 11:25 AM
To: e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com> <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Geyer, Laura T. <ltgeyer at vorys.com<mailto:ltgeyer at vorys.com>>
Subject: [E-trademarks-L] Priority of common law user over senior applicant/registrant
In most jurisdictions (though there are different applicable doctrines), generally the way common law use works is that once a federal registration is filed, the common law user’s rights “freeze” in its geographical area of use and (in some circuits) a “zone of reasonable expansion” around that area. That means that senior applicant can claim rights everywhere else in the US.

Even having an incontestable registration doesn’t mean the senior registrant always wins, though.
This is possibly the most useful summary I have ever read of the issues and I refer to it regularly.
“Whose Mark Is It Anyway?”
https://www.fr.com/insights/thought-leadership/articles/prior-user-vs-federal-registrant-whose-mark-is-it-anyway1/

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