Who Wins the Race to Use A Trademark First?

In a shoot-off between two users of the same trademark, everything hinges on who used the mark first. It seems like this would be a simple determination: whoever can show that he or she used the mark first in commerce wins. Case closed. Like most things in the law, it is not quite that cut and dried. In order to establish that you are the senior user of a mark, you not only have to show that you used the mark first in commerce, you have to show that your use was “systematic and continuous.” People commonly assume that “continuous” means that you used the mark and you have never abandoned use of the mark. Because “abandonment” means non-use of a mark for some period of time (usually three years but can be shorter under some state statutes) with an intent not to resume use, most people think the “continuous” element is a lost cause when trying to attack another’s user’s seniority. However, an absence of abandonment is not the standard when determining whether the first one to use the mark made systematic and continuous use of it. Instead, in this context, “continuous” means “use without significant interruption.” 5 J. Thomas McCarthy on Trademarks, § 26:55 (2008) citing Casual Corner Associates, Inc. v. Casual Stores of Nevada, Inc., 493 F. 2d 709 (9th Cir. 1974) (non-use for one year was not “continuing” use).

Consequently, if the alleged senior user stopped using the mark for any significant period of time (even though he or she intended to resume use later) this may cut off his or her rights to claim first use. Establishing that the alleged senior user’s use was not continuous can be a game changer in litigation over trademark priority. Moral of this story: pursue federal registration of the trademarks that matter to you or your business because it will help you avoid disputes with later users of your mark. They will either know that you and your mark exist and pick something else (and thus you avoid expensive litigation altogether) or your registration will be prima facie evidence that you own the mark and that your use has been systematic and continuous.  Second, if a trademark matters to you, take care to keep it in constant use in the marketplace so that a junior user cannot accuse you of destroying your “first use” rights.

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