Trademark registration generally trumps an unregistered (i.e. common law) use of the same trademark, so says @cyclaw in speaking about trademark registration in Canada.
I had tweeted this #trademark question:
What happens if you apply for – and get – US federal trademark registration, but later find that someone else has been using the same trademark since before you filed? Or for that matter, does it even matter whether you discovered this other use prior to your filing for registration.
Thank you to @cyclaw for that quick reply. In the US, though, the answer is slightly different: it matters only whether you can demonstrate your use prior to the date of first use by the other party. So while US federal registration generally trumps common law use, first-in-time unregistered users do retain certain – albeit limited – rights which survive and trump another party’s later registration.
US Trademark Registration – Presumption of Validity
US federal registration of a trademark creates a presumption of validity in the trademark registration, which include rights of exclusive use of the mark. The burden of proving prior use begins with the unregistered user.
If such a prior use can be shown, then the unregistered prior user can continue using the mark, but only within the geographical and subject-matter scope of the prior use.
The inability to make that demonstration of prior use nixes the unregistered user’s argument for continued use, as would the registered owner’s rebuttal proof of his or her own use pre-dating the unregistered user’s use.
In the US, this rule is codified in he Federal Lanham Act 15 U.S.C. § 1065, which states the following exception to the exclusive rights of use of a federally registered trademark:
… to the extent, if any, to which the use of a mark registered on the principal register infringes a valid right acquired under the law of any State or Territory by use of a mark or trade name continuing from a date prior to the date of registration under this chapter of such registered mark ….
As the Lanham Act makes clear, scope of the prior user’s continued use – in addition to being contingent on demonstration of earlier, continuous use – is strictly limited to the geographical limitations of the prior use. That geographic scope might be easy to establish in a case involving only Ohio or Kentucky usage, as in Advance Stores Company Incorporated v. Refinishing Specialties Inc., 188 F.3d 408 (6th Cir. 1999), but more challenging when the use is not limited by territory – say, for example, an internet use.
On the other hand, as is also clear from the quoted section from the Lanham Act, the exception only applies to trademark rights under state common law – not federal or other common law. Thus, a prior use of a trademark via the internet could not claim the same national scope and exclusivity of a subsequently federal registered trademark, but would be dependent on state-by-state claims of rights to continued – and enforcement – based on evidence of actual use in commerce in each relevant state.
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