Trademark Priority – Who Wins?

"A trademark must serve both to identify the source of the goods and to distinguish it from other goods and/or providers."

By Marc Whitfield
Partner, Taylor Porter

Registration alone does not guarantee that the registered only of a trademark will always have superior legal rights to all other users of that trademark. As stated above, the first party to use a specific mark in commerce to sell or promote their goods or services is generally the owner of that specific trademark within the territory in which the specific goods or services are being offered. Returning to our example, even a registered owner of the trademark KIROLI MEAT PIES could not prohibit a prior user of that same trademark from continuing to use it to sell food products within the senior use’s existing territory. The senior or first user of the trademark will generally be able to continue using the trademark (at least within the senior’s user’s existing territory), even if another company, the junior user, decides later to use and register the trademark. However, if the junior user obtains a federal trademark registration for KIROLI MEAT PIES, the junior registered user of the mark could prevent the senior user from expanding its use of the mark beyond its existing territory. 

What do the various symbols mean? 

The ® symbol is used to identify a trademark that has been federally registered through the USPTO, whereas a ™ or SM symbol is often used, respectively, to identify a common law trademark or service mark that has not been federally registered through the USPTO.

Can any word combination of words qualify as a trademark?

No, there are several limitations. As described above, a trademark must serve both to identify the source of the goods and to distinguish it from other goods and/or providers. If you choose a mark that is already being used or is generic and merely descriptive of the goods that you will provide, it will likely fail to qualify as a trademark. For example, if you wish to sell lamps under the trademark QUALITY LAMPS, then you have likely chosen a mark that does not function as a trademark since it fails to identify and distinguish your lamps from other sellers that probably also market and sell “quality lamps.” Both words are commonly used within the industry to generically describe the products being sold. 

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