Trademark Infringement: Priority of Use and Likliehood of Confusion

Hello!

Today I am going to explain the requirements to prove trademark infringement.  Believe it or not, there are tons of trademarks that infringe on another trademark's rights whether intentionally or unintentionally.  As I have discussed previously, it is important to protect your trademark to avoid dilution of your brand and to protect licensing rights and royalty income.  

In order to prevail on a trademark infringement action, an individual or company must show (1) priority of its trademarks use in commerce and (2) the use of similiar trademarks in commerce is likely to cause confusion among the relevant consuming public. Cumulus Media Inc. vs. Clear Channel Communications.

In this post, I will explain what the law means when it states a mark must have "priority of use in commerce."  In my next post, I will explain the concept of "likliehood of confusion."

Priority of Use in Commerce

A trademark will have priority rights over another similar trademark if the trademark was used first in commerce.  The definition of use in commerce is the bona fide (actual) use of the trademark in the ordinary course of trade, and not made merely to reserve a right in the trademark. The Lanham Act sec. 45.  More specifically, it comprises the trading of something of economic value such as goods, services, information or money between two or more entities. 

A few examples of Use in Commerce are: 

1. selling a product or service online.

2. publishing (print and online)

3. distribution of products

Use of Commerce is not:

1. Using a trademark as a key word to trigger the display of sponsored links online is not use of the mark in a trademark sense.  (Merck vs. Mediplan)

2. Simply registering a domain name. (Brookfield Communications Inc. vs. West Coast Ent.)

3. Simply incorporating a business without customers.

Priority of Use in Commerce can be established by:

1. The trademark owner was first to use the trademark in its region.

2. The trademark owner was first to file an application with the USPTO based on use in commerce.

3. The trademark owner was the first to file an application with the USPTO based on intent to use, however, the trademark owner MUST show actual use within 6 months of an intent to file.

I hope this information was helpful.  Please leave a comment or contact me via email if you have any further questions.