What is the Priority Date for a Trademark Registration?

By Josh Gerben, Esq.

When filing a trademark application, there may be new terms and legal jargon that pop up that are not familiar to you. One of these phrases might be “trademark priority”—what exactly does it mean, and how does it affect your trademark rights? Trademark priority examines how long the trademark has been actively used in commerce and can help to determine if the trademark owner has precedence over another user of the same or a similar mark. However, the best way to achieve a priority date for your trademark is by filing a federal trademark application as early as possible. Even if your trademark is not yet in use, the application can be based on an intent to use the mark, allowing the filing date to act as an earlier priority date and declaring your claim on the trademark’s rights.

Overall, priority in a trademark can be earned in two ways:

1. Filing a trademark application
2. Using a trademark “in commerce” in the United States

In this article, we will explore both ways of obtaining a priority date for a trademark.

Establishing Trademark Priority

If you have not yet begun using your trademark but still want to ensure that your trademark rights are protected, the best course of action is to file a trademark application (our application services) that declares your intent to use the trademark in connection with your specific goods and services. By doing this, the applicant can effectively reserve their rights within a trademark prior to its debut, as the trademark application announces the owner’s intentions to utilize it in connection with their business.

Essentially, establishing priority is accomplished by the individual that first files the trademark application expressing their intent to use it or by the individual that uses the mark first and continues to do so consistently. Above all, however, filing a trademark application as soon as possible is the best way to safeguard your trademark rights as it secures the earliest possible date of priority.

Intent to Use vs. In Use Filings

While trademark rights are typically awarded to the first user, it is also incredibly beneficial to be the first filer. This is because American trademark applications are examined in the order that they are filed, not the date that the trademark was first used. When a trademark filing is submitted to the USPTO, the filing creates a federal priority date regardless of whether that mark is being used yet. In order to maintain that priority date, the applicant must provide proof of the trademark’s use in commerce in order for the trademark to register (use in commerce explained: video). These filings are intent to use applications, which have a 1b filing basis, and declare the intention to use a mark in commerce before that usage has commenced. These applications must be supplemented by a statement of use filing before achieving registration to demonstrate that trademark usage has begun, but they provide a way to claim priority in a trademark prior to it being active in the marketplace.

On the other hand, using the trademark can create a priority date without initially filing the trademark application. If you have already begun using your trademark in the marketplace, you are able to file a 1a application based on the trademark’s use. It is important to note that these applications will not give you a priority filing date that predates usage, but they do allow you to claim the date you first began utilizing the trademark in association with your services and products. These dates are key players in opposition proceedings and infringement matters. Regardless, the priority filing date is still the most important in achieving a federal trademark registration, so it is imperative that you file the application as soon as possible.

Common Law vs. Federal Law Priority

To successfully obtain a federal trademark registration, the goods and services outlined in the application must be distributed across state lines. If your company’s products or service offerings are confined to a small region that does not include multiple states, a federal registration is not attainable. However, common law trademark rights are still available to you as long as you continue to regularly use the trademark in conjunction with your company’s output. These common law rights will provide you with priority within your locale and prevent other companies from using a similar trademark near you. However, common law priority will not prevent a larger, national company from using a trademark similar to yours in other states, as common law rights are only relevant to your geographic region.

If you are conducting interstate business, it is always preferable to seek out a federal trademark registration so that you can enjoy the full protections of federal law. These registrations come with numerous benefits for the trademark owner, such as the right to use the mark nationwide and the provision of a national notice to other businesses that you are claiming the rights within that specific mark.

Priority Dates & Foreign Applications

If your company is conducting business around the world, it may be in your best interest to file trademark applications in all the countries you are actively involved in. Applicants who have filed trademark applications in foreign countries can use them as the filing basis for an American application. As long as the American application for the same trademark is filed within six months, the applicant can claim priority based on the foreign filing date, allowing them the benefit of the earlier filing date in their US application as well. Alternatively, an American application can be used as the filing basis for a trademark application in another country, as long as that six-month timeframe is adhered to as well.

The Importance of Trademark Priority Dates

Ultimately, priority dates are a critical factor to claiming rights within your trademark and can greatly affect the protections that your business is afforded. The best way to ensure that your application is correctly and promptly filed is by hiring experienced trademark counsel that understands the integral role that priority plays in your trademark rights. If you have any questions about trademark priority, getting started with your application, or addressing filings in foreign countries, please contact an attorney from Gerben IP today.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.