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  • Writer's pictureTodd

Who has priority over trademark use?



What happens if somebody files for my trademark before you do? Congress passed the Lanham Act, which can be found in Title 15 of the United States Code beginning at section 1051. The Lanham Act gives priority to the first use in commerce.


In other words, if you started using your trademark on January 1, 2002, and somebody else begins using your trademark December 1, 2019, you would have priority. Under United States law, this is also true even if the later user, also known as the junior user, files an application before you do. If you can establish that you have had continuous use of the mark in commerce before the date claimed by the other party, your claim should prevail.


There are some circumstances in which you could consider entering into a coexistence or concurrent use agreement, such as if you operated solely in a different industry or in another geographical territory.


However, even if you prevail in these circumstances, these scenarios would still create legal fees and discomfort.


Note that other countries are first to file jurisdictions. Take Brazil, for example. A soccer player for the Brazilian club Flamengo used an expression, when translated, means “Another level” to taunt opponents. The soccer player used this slogan in rap music and at a sporting goods store he owned. A Flemengo fan actually filed for trademark protection for the slogan, and sued the soccer player to keep him from using the mark in commerce in Brazil.


It’s important to know what jurisdiction or jurisdictions you want to use your mark in commerce in, and you should not delay filing.


Please note that the information contained in this article is intended for general informational purposes only and not as specific legal advice. The facts of your situation may differ from this general information. It is not intended to and does not in any way establish an attorney-client relationship.

If you wish to schedule a consultation, please go to www.trademarksarefun.com

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