Some may assume that once a federal trademark registration is obtained it grants the exclusive right to use the mark on particular goods or services and can readily prevent use of the mark by any other party. However, trademark law is more complicated than that. In reality, having a trademark registration, even a valid and “incontestable” one, does not guarantee the exclusive right to use the mark in all circumstances.
In the United States, trademark rights are conferred by use of the mark. In other words, to acquire ownership of a trademark, it is not enough to have created the mark first, or even to have registered it first. Instead, the party claiming ownership must have been the first to actually use the mark in commerce.
Sometimes a federal registrant is not the first user of a mark in a territory. A “prior user” is a party who began using a mark somewhere, or applied for the mark, prior to the federal registrant’s application date. On some occasions, an unregistered prior user may have superior rights to that of the registered user, at least in a specific territory.
Contested v. Uncontested
A registration that is less than five years old is considered to have “contestable” status. Generally, the owner of a contestable trademark is entitled to exclusive use of the mark throughout the U.S. However, it is possible for a prior user to continue using the mark in any territories in which it was operating prior to the mark’s registration date. To do so, the “prior user” must show that it (1) used the mark prior to the registrant’s date of filing and (2) acquired common law rights as a result of its use of the mark prior to the registrant’s use in any territory.
A contestable mark is also subject to a Petition to Cancel Registration. A petition to cancel a registration of a mark may be filed within five years from the date of the registration by any person who believes that he is damaged, or will be damaged, by the registration of a mark on the principal register.
A registration becomes “incontestable” if, after the fifth year of registration, the registrant files an affidavit (1) avowing that there have been no adverse decisions regarding the registrant’s right to use the mark, (2) that no such proceedings are pending, and (3) that the mark has been in continuous use for five consecutive years. Despite the elevated status of an incontestable registration, it is still subject to any prior user’s rights that existed at the time of registration in any particular territory based on use that continues to the present.
If a prior user can prove it has continued to use a mark without significant interruption since prior to the registrant’s use in a territory, the prior user will continue to have rights superior to those of the registrant in that territory. But, in contrast to contestable marks, the registration of an incontestable mark cannot be cancelled.
Anyone interested in registering a trademark should be aware that registration alone does not conclusively establish an exclusive right to use the mark. The truth is that prior users have significant protection under the Trademark Act, and on some occasions prior users may have superior rights to that of a registered user, at least in a specific territory.
If you’d like to learn more or have any questions regarding this matter, we’re more than happy to help. We can be reached at (786) 837-6787 or via email – info@epgdlaw.com
*Disclaimer: This blog post is not intended to be legal advise. We highly recommend speaking to an attorney if you have any legal concerns. Contacting us through our website does not establish an attorney-client relationship.*
