In many countries, such as the United Kingdom[1] and China[2], trademark rights are granted to users who are the first to file for a trademark’s registration. In the United States, trademark rights are vested to users who are the first to use the mark in commerce.[3] This legal framework often referred to as the “first-to-use” system, requires that an owner of a product or service must have commenced sales of the products or services in commerce in order for rights to a trademark to vest.[4]

Although this system may sound intuitive at first, complexities and issues do arise, particularly when there are multiple users of the same trademark. In such instances, the party who first used the trademark in commerce may be referred to as the senior user whereas the party who used the trademark in commerce subsequent to the “senior user”[5] may be referred to as the “junior user.”[6] Additionally, particular issues arise when dealing with trademarks which are not federally registered with the United States Patent and Trademark Office (USPTO). In such cases, which party is the senior user and is therefore the rightful owner of the trademark, rests within the common law.

Common Law Trademark Protection

Trademarks are modernly protected by federal legislation which was passed in 1946 in what is commonly referred to as the Lanham Act.[7] However, trademark protection has been available in the United States since colonial times under what is known as the “common law”, which is a body of law derived from legal precedents that have developed over time by court decisions.[8] Trademark protection under the common law automatically vests upon a user’s use of a product or service in commerce. However, unlike the breadth of benefits that federal trademark protection provides, there are limitations to the protections that are afforded to trademarks which solely rely upon common law protection. The protections granted to common law trademarks are only limited to the geographic area in which the trademark is being used, as opposed to the nationwide protection which is provided to federally registered trademarks under the Lanham Act.

Traditional Common Law Protection

Prior to the invention of the internet, it was rather straight forward as to what geographic area a trademark’s protection would extend to. A company that sold a product in a single state, such as California, or to a region such as the West Coast, would not be in conflict with a company that sells the same product with the same name in a different state or territory such as New York or the Mid-Atlantic. Despite this somewhat intuitive concept, issues began to arise whereby it became necessary for certain states to implement state laws which defined how a trademark user would be able to qualify under a state’s common law trademark protection.[9]

Common Law Protection in the Digital Age

With the help of state’s laws which assisted in defining whether a user was in fact entitled to common law trademark protection, disputes over which party was the senior user and which party was the junior user became simpler. Nevertheless, the internet has since convoluted this concept and court cases in different Federal Circuits have further made it difficult to be able to discern which party is the ultimate owner of such trademark rights.

The courts have held that merely setting up a website and selling goods or products is not sufficient for common law trademarks to vest on a nationwide geographical level.[10] Instead, courts have implemented certain tests and look at various factors when deciding the extent of a trademark’s geographical area of protection.[11]

Priority in Filing

Notwithstanding that the United States follows the “first-to-use” system; things tend to get a bit trickier when dealing with trademarks that have been registered with the USPTO. Although a user’s ultimate priority to the rights of a trademark may have vested upon their senior use of the trademark, when it comes to filing a trademark application with the USPTO, such a user’s priority is not taken into consideration during the examination process.

Instead, when an examining attorney is assigned to review a trademark application, the examining attorney will search through the USPTO’s database to determine whether any previously filed or registered trademarks may conflict with the application that they are reviewing. This gives way to issues in instances where a party has either filed an application under the intent-to-use basis, which is often done by parties before they have started using the mark in commerce. Additionally, there may also be the scenario whereby a user who is in fact the junior user of a trademark has filed a trademark application with the USPTO before a senior user has done so. Under the Lanham Act, the user who was first to use the trademark would be the senior user, however, an examining attorney will not take such priority into consideration and may therefore either suspend the senior user’s application pending the outcome of the previously filed application by the junior user[12] or may otherwise refuse a senior user’s application based on there being a likelihood of confusion with the junior user’s registered trademark.[13]

Oppositions & Cancellations

When confronted with a situation where the junior user’s previously filed application is either filed on the intent-to-use basis or is otherwise in the middle of the examination process, the USPTO has implemented a mechanism known as an opposition[14] through the USPTO’s Trademark Trial and Appeal Board (TTAB) division. Notably however, oppositions can only be made against an application that is currently in the publication period of the examination process.[15] While this is typically a thirty-day window that affords interest parties the ability to intervene in the trademark registration process, there are also options available whereby an interested party can extend the publication period for additional periods of time.[16] Through the use of an opposition proceeding, a senior trademark user may be able to thwart a junior user’s ability to register a conflicting trademark despite the junior user having filed the application prior to the senior user.

The publication period however is a relatively small window and many instances may arise whereby a senior trademark user is not even aware of the existence of a junior user’s trademark application until it is already registered. In such a case where the junior user’s previously filed trademark has already been registered, the USPTO through the TTAB division has a mechanism called a cancellation proceeding in place which similarly affords a senior user the ability to have a junior user’s registered trademark cancelled, which in turn may allow for the senior user’s application to proceed towards registration.[17]


[1] Trade Marks Act 1994, § 2. [2] Trademark Law of the People’s Republic of China, Article 31. [3] 37 CFR § 2.34 (2020). [4] 15 U.S.C. §1127 (2020). [5] Black’s Law Dictionary (8th ed. 2004). [6] Id. [7] 15 U.S.C. §§ 1051–1127 (2020). [8] Black’s Law Dictionary (10th ed. 2014). [9] California Business and Professions Code §§ 14200 et seq. (2020). [10] See, Dudley v. Healthsource Chiropractic, No. 6:07-cv-6631 (W.D.N.Y August 7, 2012). [11] See, Couture v. Playdom, Inc., 778 F.3d 1379 (Fed. Cir. 2015). [12] 37 C.F.R. §2.67 (2020). [13] 15 U.S.C. §1052 (2020). [14] 15 U.S.C. §1063 (2020). [15] Id. [16] Id. [17] 15 U.S.C. §1064 (2020).