In Trademark law, a second user cannot gain an equitable claim to use of the same mark if it adopted the mark after the first user registered it. However, there remain two sources of potential conflict:

  • Constructive notice does not affect preexisting right between two users. This means that it is possible for a registrant to acquire rights in a mark while another user may have acquired rights in a remote area. The resolution between these rights is difficult.
  • Between application and publication it is possible for a second user to adopt a mark innocently without notice, constructive or otherwise.

Three Positions of Registrant and Other Users

    1. An earlier user may apply for registration even though a later user has acquired certain rights in other areas.
    2. A later user may apply for registration even though an earlier user also has acquired rights in other areas.
    3. An earlier user may apply for registration even though a later user may acquire rights in the interim between application and publication.

What Type of Claim is Rewarded Registration?

A claim based on first use. A claim based on first application, despite it being the second use of the trademark, occasionally is rewarded with registration in order to encourage use of the federal registration system.

What are my Rights as a Senior Registrant against a Pre-registration User?

Federal registration generally does not affect those rights already established by good faith pre-registration users. A pre-registration user has the right to continue the use within the limited area in which the trademark has been established. A federal registrant cannot even enter the geographical market of a pre-registration user who established its rights prior to registration or publication or tell the pre-registration user to stop using their trademark.

What are my Rights as a Junior Registrant against a Pre-registration User?

A junior registrant faces serious problems. Those problems vary depending on whether the junior users know about the senior user¿s activities at the time of application. If the junior user has knowledge this must be disclosed in the application and the user must seek a concurrent rather than an exclusive registration.

What is Concurrent Registration?

Concurrent registration is available when more than one person is entitled to use a mark because of actual use prior to any application for the mark, provided that confusion, mistake, or deception is unlikely. There is a general presumption toward prior users so if the applicant is the first user, nationwide registration presumptively belongs to it.

Should I Consult a Lawyer about my Trademark Issue?

The deadlines and regulations for trademark registration are detailed and strict. An intellectual property lawyer can help you meet all the deadlines and fulfill all the requirements. A lawyer can also participate in on-going research to make certain no one else is using or diluting your trademark without your permission. Additionally, if you have an issue of trademark dilution or infringement, a lawyer can guide you through the difficult and strict procedural requirements for litigation and bring out the core of your case.