Keith Mack
In the United States, trademark rights are generally granted to the first user of the mark in commerce, rather than the first filer. This is known as trademark priority. Common law trademark rights are unregistered rights that are developed under a system of rights governed by state law. They are weaker than federally registered trademarks but still confer certain rights and limitations. A senior user can rebut the presumption of nationwide ownership by a registered trademark owner by showing that they used the mark first and acquired common law rights in a specific geographic area. In such cases, the senior user can preclude the registered trademark owner from using the mark in that area. A trademark cancellation proceeding is a legal case that allows a complainant to cancel a defendant's trademark rights, enabling a new trademark applicant to register a trademark.
| Characteristics | Values |
|---|---|
| Trademark cancellation proceeding | A legal case, similar to a civil lawsuit, in which a complainant is provided with the opportunity to attack and ultimately cancel a defendant’s trademark rights |
| Fundamental purpose of a trademark cancellation proceeding | To allow a new trademark applicant to register a trademark which would otherwise be owned by a different party |
| Who can file a trademark cancellation proceeding? | A plaintiff who can show that they would be "damaged" and can demonstrate why the trademark itself no longer warrants the protections afforded to Registered Trademarks |
| Common reasons for filing a trademark cancellation | Fraud claims, consumer confusion, abandonment |
| Common law trademark rights | Rights developed under a system of rights governed by state law; limited to the geographic area in which the trademark is used |
| How to establish priority for common law trademark rights | Show that the mark was in use prior to the registrant’s filing date and that the senior user acquired common law rights by using the mark before anyone else in that geographic area |
| Who is a prior user? | A party who began using the mark or applied for the mark prior to the registrant's application date |
| Who is a junior user? | A party who began use of the mark after the prior user but before the prior user applied for registration |
| Rights of a junior user | A junior common law user may be able to use a similar mark for related goods or services as a senior user as long as the mark is used outside of the senior user's geographical area and the junior user adopted the mark without knowledge of the senior user |
| Rights of a senior user | A senior user can rebut the presumption of nationwide ownership by a trademark owner by showing that they used the mark before the owner and acquired common law rights to it |
| Incontestability | A trademark owner’s registration can become incontestable after five years of registration, boosting the evidentiary value of a trademark registration; however, it can still be subject to an injunction by a prior user |
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What You'll Learn
Common law rights vs. federal trademark registration
Common law trademark rights are automatically granted in the United States based on the use of the mark without any registration. Common law trademark owners must use state courts and laws to enforce their trademark rights against a potential infringer. They also have to establish that they have a common law trademark to sue for infringement, which can be a fact-intensive process.
Federal trademark registration, on the other hand, grants priority to use the trademark across the entire nation. Registering a trademark with the USPTO creates rights throughout the United States and its territories and includes the registration in a publicly accessible database of registered trademarks. This registration acts as constructive notice of the registrant's claim of ownership of the mark, precluding anyone else from claiming good faith, innocent use, or expanded use of the same mark after the date of registration.
To determine which party has senior rights to a trademark, there must be an analysis of who used the mark first in commerce and if appropriate, what rights may exist through registration. A senior user can rebut the presumption of nationwide mark ownership by showing that they acquired common law rights by using the mark before anyone else in that geographic area.
In the case of a priority dispute, if the registrant's mark is canceled or the applicant's application is refused, the parties' trademark rights are based on their respective common law rights. Each party may have common law rights in different geographic territories.
It is important to note that even though a mark owner has not registered or applied for a mark, they may still have common law rights to a trademark. These rights are not as powerful as a federally registered trademark but confer certain rights and limitations.
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Likelihood of confusion
The likelihood of confusion between trademarks is determined by the similarity of their visual or auditory presentation. Even if two trademarks are used for different goods or services, they may still be deemed confusingly similar. For example, the trademarks for Dove soap and Dove ice cream bars, or Delta faucets and Delta air transportation services, are considered confusingly similar.
The degree of similarity between two trademarks is an important factor in determining the likelihood of confusion. The further apart the goods and services are, the less likely there is to be overlap between the two markets and the higher the degree of similarity between the trademarks needs to be for confusion to occur. For example, computer software and computer peripherals are likely to attract similar customers, so the risk of confusion is higher, and the brand names need to be more distinct.
Other factors that influence the likelihood of confusion include the price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase. The length of time a trademark has been used without evidence of actual confusion arising is also a factor.
In the context of common law rights and federal trademark registration, a senior user can rebut the presumption of a registrant's nationwide mark ownership by showing that they have common law rights by using the mark before anyone else in that geographic area. A junior common law user may be able to use a similar mark for related goods or services as a senior user if they are outside of the senior user's geographical area and the junior user adopted the mark without knowledge of the senior user.
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Geographic territories
The geographic reach of a common law trademark is dictated by the extent of its market penetration and consumer recognition. This means that a company can claim trademark rights in a particular geographic area by consistently and continuously using a mark in business transactions within that market. It is important to note that mere intention or sporadic use is insufficient to establish common law trademark rights. Instead, ongoing and consistent use is necessary to solidify these rights.
When it comes to territorial reach, documentation of the specific regions where the mark has been actively used is essential. This includes areas where sales have occurred or where advertising efforts have made a significant impact. The public association between the mark and the business is also crucial, and this recognition can be demonstrated through customer feedback, market surveys, or press coverage.
In the context of priority disputes, the geographic territory becomes a critical factor. A senior user, or prior user, refers to the first user of a mark in a particular geographic market. A junior user, or subsequent user, is the second or later user of a similar mark. A senior user can rebut the presumption of nationwide ownership by a registered trademark owner by showing that they used the mark in a specific geographic area before the registrant's filing date and acquired common law rights through priority of use within that territory.
It's worth noting that a junior common law user may be able to use a similar mark to a senior user as long as they operate outside of the senior user's geographical area, including any natural zone of expansion, and as long as they adopted the mark without knowledge of the senior user's existence. This is known as the “Tea Rose-Rectanus” or "Hanover-United Drug" prior use doctrine. However, if a junior user infringes on the senior user's territory, even unintentionally, they may face trademark infringement claims.
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Incontestability
However, incontestability does not provide absolute protection. It is subject to any senior user's common law rights, and a prior user can still seek an injunction prohibiting the use of the mark within their territory. In addition, a trademark with incontestable status can still be cancelled or challenged on certain grounds, such as abandonment, fraud, misuse, or the mark becoming generic.
In the context of cancelling a registered trademark by claiming common law priority, it is important to note that common law rights must be considered when clearing marks and in trademark disputes. A senior user can rebut the presumption of nationwide mark ownership by a registered trademark owner by showing that they acquired common law rights by using the mark first in a specific geographic area. If the registered mark has not yet gained incontestable status, a prior user may be able to cancel it based on priority or descriptiveness claims. However, if the mark has been registered for over five years, it can no longer be challenged on these grounds, and a prior user would need to establish other defences to successfully cancel the trademark.
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Cancellation proceedings
To initiate cancellation proceedings, several steps must be followed:
- Consult an experienced trademark attorney: Trademark law is complex, and an attorney can provide valuable guidance and ensure adherence to correct procedures.
- Determine the grounds for cancellation: Common grounds include non-use, abandonment, genericness, descriptiveness, likelihood of confusion, fraud, bad faith, or prior rights.
- Review the trademark registration: Obtain and review details of the trademark registration, including the owner's name, registration number, and the goods or services covered by the trademark.
- Gather evidence: Collect documents, records, market research, and other materials that support the claim for cancellation and demonstrate the grounds for cancellation.
- File a notice of opposition: This must be done within 30 days of the publication of the application being opposed. A pleading and a fee are required when filing an opposition.
- Submit a petition for cancellation: Utilize the ESTTA form, which provides a list of available grounds for cancellation. Attach the pleading and submit the required filing fee.
It is important to note that trademark cancellation proceedings are subject to time constraints, and consulting a specialized trademark lawyer is advisable, especially after the initial five years of registration.
In terms of common law priority, there are several key considerations. Common law trademark rights provide exclusive rights to use a mark within a specific geographic area based on priority use. A senior user can rebut the presumption of nationwide ownership by a registered trademark owner by showing prior use and acquisition of common law rights in that geographic area. This can preclude the registered owner from using the mark in that area.
Additionally, a junior common law user may use a similar mark as a senior user if they operate outside the senior user's geographical area and if they adopted the mark without knowledge of the senior user.
In the case of "incontestable" registrations, which occur after five years of registration, common law rights still play a role. A prior user can seek an injunction to prohibit the use of a mark within their territory, even against an incontestable registration. This highlights the importance of considering common law rights when clearing marks and addressing trademark disputes.
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Frequently asked questions
A trademark cancellation proceeding is a legal case, similar to a civil lawsuit, in which a complainant can cancel a defendant's trademark rights. The plaintiff must show that they would be "damaged" and why the trademark itself no longer warrants protection.
Trademark priority is the concept that trademark rights generally belong to the first user of the mark in commerce, rather than the first filer. Priority can be established by showing proprietary rights in a trademark that causes a likelihood of confusion.
To cancel a registered trademark by claiming common law priority, you must prove that you have common law rights to the trademark, which means showing that you used the trademark in commerce before the registrant. You must also show that the trademark is causing "consumer confusion". It is recommended to work with a qualified trademark attorney throughout the process.
