Trademarks function as a source identifier – the source of the goods or services. To trigger trademark rights, a mark owner must establish priority of use and/or filing. A common misconception in trademark law, even amongst attorneys, is how trademark rights work. Some believe that trademark rights are always based on registration. This is incorrect. Trademark rights at common law stem from the use of the mark, which is also reflected in federal trademark law.

Attorney Michael A. Long has represented clients in federal and state court, and before the Trademark Trial & Appeal Board. Mr. Long has handled litigation for high-value intellectual properties and managed large trademark portfolios in the U.S. and internationally. Mr. Long has litigated trademark matters through trial and appeal. IP matters Mr. Long has worked on include matters involving:

Types of use for purposes of trademark application priority

In the United States, federal trademark rights generally stem from use of the mark. The mark can either be used in commerce (actual use) or alternatively by filing a trademark application (constructive use). The applicant gets the filing date of the mark as its “constructive use” date.

Trademark infringement disputes often involve issues of the nature of use, priority, and whether there is a likelihood of confusion concerning the marks and the subject goods and/or services.

The party that is the first one to use the mark in commerce is often referred to as the senior user and the later user of a similar or identical mark is referred to as the junior user of the mark. The first user can be subject to a dispute concerning the relatedness of the goods or services. Analysis of trademarks infringement can be complex and varies according to jurisdiction. In states within the Ninth Circuit, the leading case in this area is AMF v. Sleekcraft. A similar standard applies during a trademark examining attorney’s review of a trademark application, using similar factors under the E.I. duPont Nemours case. The standard for refusal or infringement is “likelihood of confusion” as to the source of the goods. TMEP 1207.01

International trademark applications can be filed, for example, via the Madrid Agreement, an international treaty signed by 122 countries throughout the world. The Madrid Protocol allows a trademark applicant to file one application and to designate multiple countries (for additional filing fees). The Madrid Application can provide cost effective means to pursue international protection and can be based on priority applications in the U.S. or other member country under the Madrid Agreement.