Common Law Priority Rules
Keep in mind that these are extremely simplified examples that only amply demonstrate the concept of brand priority. If someone registers a federal trademark that is similar to yours, you will continue to have priority in your geographic area. Legal title under general law can only be proved correctly and absolutely by tracing in an uninterrupted chain all transactions issued in relation to the country up to the grant of the Crown of origin. In Australia, as colonization is still relatively new, it is possible to do such research, but often extremely difficult, time-consuming and cumbersome to do. In England, such an investigation is practically impossible. In order to solve this problem, a number of delegation rules have therefore been adopted. The first is the practice of attributing the former interests in the title to what is called the “good root of the title.” However, there are cases when the new brand may be a priority instead. What does this really mean? If there is a former user and a junior user whose registration is less than five years old, the registrant will enjoy the benefits of the assumptions granted by law, but the presumptions can be rebutted. The previous user must be able to prove that the trademark was used before the filing date of the owner and that the common law rights were acquired in a specific geographical area. The rights of the previous user will be frozen as soon as the registration fails (to the extent of the rights he had at the time of filing the application). If the previous user can prove prior use before the filing date (even if it is only a domestic use), an opposition or cancellation procedure may be initiated. If the previous user succeeds and the owner`s trademark is removed or the applicant`s application is denied, the parties` trademark rights are based on their respective common law rights.
Each party may have common law rights in different geographic areas. In the same scenario, if the owner`s trademark is more than five years old, the previous user cannot remove the trademark under section 14 of the Trade-marks Act (because of its indisputable status) at the Trade-marks First Instance and Appeal Board (“TTAB” or the “Board”). However, the previous user could theoretically be granted an injunction on his territory in federal court, even if the trademark has the status of indisputable. After you use the marker for the first time in a zone, you have priority rights for that particular geographic location. Possessory privileges – A possessory privilege is a common right or legal interest in an asset that: This is important because trademark rights can be enforced either by common law (local) or by federal (national) registration. A right of ownership prevails over a security right under article 9, unless customary law or the legal power to create the privilege provides otherwise. In contrast, a non-titled lien does not prevail over a security right that was perfected before the lien was established. However, it takes precedence over an imperfect security interest.
A trademark used only “at the national level” cannot benefit from federal trademark protection because Congress does not have the power to regulate such restricted use. However, domestic use of a trade mark confers on a trade mark proprietor trade mark rights in the geographical area in which it is used. How the Internet can affect national priorityHistorically, the national priority of trademark attorneys is listed as one of the most important reasons for registering a trademark. However, the open question arises as to whether the operation of a business on the Internet and whether trademarks used on a website without federal registration automatically receive priority at the national level. A website that contains a company`s brand is arguably an advertisement available in every state in the country. Marks used in advertising are likely to establish a common law priority, provided that the advertising creates an association between the mark and the goods or services in the minds of the consumer public. Therefore, one might think that maintaining a website automatically sets a national priority. However, until the law of the Internet has evolved, there is no certainty that this will be the case. For example, there is reason to believe that this will not be the case for companies that only cater to a local audience. In this case, it may not be appropriate for the website to be accessible nationally as long as the market niche remains local. In fact, courts may ultimately require actual sales in a state or region before giving commercial priority in this area. Given these uncertainties, national priority remains, according to this author, probably one of the greatest advantages of registration.
There are various sources of law in the American legal system. The Constitution of the United States is fundamental; U.S. law and common law must not conflict with its provisions. Congress creates a law (with the president`s signature), and the courts will interpret constitutional law and legal law. Where there is no constitutional or legal law, the courts work in the common law area. The same applies to the law within the fifty states, each of which also has a constitution or a fundamental law. In The proceedings of the First Instance and Trade-marks Appeal Board (“TTAB” or “Board”), an opponent may not have a trademark registration to invoke, and if so, it is a matter of priority. Evidence must be provided in order to take priority actions. To prove common law priority, trademark law requires that the trademark be used previously (not abandoned) in the United States. Trademark Law (Sections 45, 15 U.S.C., § 1127) partially defines the task as follows: The reason you need to worry about brand priority is that if you ignore it, another company may snatch your name, logo, and even color palette from you. A notorious example of “frozen” customary rights can be found in the Burger King case.
Burger King of Fla., Inc. v. Hoots, 403 F.2d 904 (7th Cir. 1968). In 1959, a small family-owned restaurant owned by the Hoots family called “Burger King” in Mattoon, Illinois, went live and acquired an Illinois state brand for the same name. The family restaurant Les Hoots is not affiliated with the now famous fast food chain of the same name. Why do you think the law allows a privilege to prevail over an advanced security right? Should an unheld lien take precedence over advanced security? Why or why not? Should a non-holder privilege take precedence over an imperfect security right? Why or why not? Can you identify a common objective under these priority rules? Former users enjoy significant protection under the Lanham Act.