Take Home Points
Priority of use in trademark law is an often-misunderstood concept. Priority of use simply means which mark (whether a registered or common law mark) was used first in commerce; the mark need not be registered for a priority of use dispute to arise. However, the possibility of likelihood of confusion between the earlier and later used marks must be found to exist; otherwise, the priority of use issue is of no consequence because there is no “mark conflict.” As this blog discusses, registered marks can be subject to cancellation on priority of use grounds. Priority rights can also come up in opposition proceedings where the opposer claims prior use of a mark that the other party is seeking to register. Registered trademark applicants and the owners of common law marks should maintain business records indefinitely showing exactly how and when their marks were first used in commerce in the event a contest over priority ever arises. Examples of plausible business records for a priority of use contest are: 1) records showing when the website became accessible to the public for the purchase of goods/services sold under the mark; 2) records showing when goods sold under the mark and purchased from a catalog were shipped to an out-of-state location by the mark owner or agent; 3) records showing when goods sold under the mark became available for purchase at a bricks and motor store; and 4) records showing when a restaurant opened its doors for business.
Discussion
Both trademark priority and common law trademarks are often misunderstood areas of trademark law. Regarding trademark priority, priority is usually granted to the first mark owner to use the trademark in commerce regardless of whether the mark was ever registered or used as a common law mark. Registered trademark applications must include the dates the mark was first used anywhere and the date the mark was first used in interstate commerce. Sometimes the two dates are the same; sometimes they are not. For example, the usage of the mark in the applicant’s state of domicile (the “first use anywhere” date) may precede usage of the mark in other states (“interstate commerce date”).
Trademark priority rights contests can have an impact on the mark registration process and the “integrity” of actual registered marks. Such contests typically arise under the following scenarios.
- Two trademark applications are filed for very similar marks for similar goods/services. The date of first use specified by one applicant is earlier than the date of first use of the other applicant. The applicant with the earlier date of first use (the Senior User) will generally prevail in a priority dispute and be awarded the registered trademark.
- The owner of a registered mark for restaurant services sues for trademark infringement by a restaurant located in Florida. The Florida defendant may argue that its prior use precludes a finding of infringement. If priority rights are proven, the Florida restaurant will have right to continue using the restaurant name locally.
- The Senior User of an unregistered mark seeks the cancellation of a registered mark based on the Senior User’s priority rights in a common law mark. Such a cancellation scenario recently presented itself in Mathew E. Fraser v. Maurice Jackson, III and Enos Watts, Cancellation Proceeding 92081235 (September 11, 2025).
In Fraser, the Trademark Trial and Appeal Board (TTAB) recognized that the Petitioner Mathew Fraser, a retired Cross-Fit Champion, “is widely considered to be the most dominant ever male athlete in the sport of CrossFit.” To establish entitlement to petition to cancel a registered mark in the first place, a Petitioner must establish that he had reasonable belief that he would be damaged by the continued registration of Respondents’ mark, establishing his entitlement to petition to cancel. Fraser provided testimony and evidence relating to his pending HWPO trademark application, including the USPTO’s refusal to register in Class 25 based on Respondents’ registration. This testimony and evidence met the standard for establishing that the Petitioner had a reasonable belief that he would be damaged by the continued registration of Respondents’ mark (meaning he would not be able to register his mark) and was entitled to proceed with the petition to cancel.
A registration is prima facia evidence of the registered mark’s validity. The Petitioner has the burden of establishing that the registered mark should be cancelled. In bringing his cancellation proceeding, Fraser argued that there was a likelihood of confusion between his common law mark HWPO (a mark that had been used without formal registration) and Respondents’ registered mark. The common law mark was associated with the cross-fit sport and was an acronym for the words “Hard Work Pays Off.” The Respondents’ registered mark was a design mark with the words “HARD WORK PAYS OFF” in stylized font. The Respondents were involved in the rap music genre.
Fraser claimed that his common law mark HWPO had priority over the registered mark. A showing of priority rights in the common law mark was required to cancel the Respondents’ registered mark and thereby pave the way to registration of his mark.
The Respondents did not challenge Fraser’s likelihood of confusion claim by applying the du Pont factors to try and argue against likelihood of confusion. Absent likelihood of confusion, the priority of use claim would have been moot. The Board did not therefore evaluate the likelihood of confusion between the two marks. Instead, the Respondents chose to challenge the Petitioner’s priority claim. In doing so, they sought to rely on a priority date earlier than the alleged first use date in their registration. The Board noted that “[a] party may seek to rely in a proceeding on first use dates earlier than the first use dates stated in its registration, but must prove those earlier first use dates by clear and convincing evidence.” Citing JNF LLC v. Harwood Int’l Inc., Cancellation No. 92070634 (TTAB Sept. 21, 2022). The Respondents met this high standard, and the Board accepted January 25, 2018 as the registered mark’s priority date.
Common law marks in a mark can be established through actual use, trade name use, or through use analogous to trademark use (non-technical use such as use in advertising which creates a public awareness of the designation as a trademark identifying the party as a source. The mark must be distinctive, inherently or by acquired distinctiveness, and in use before the earliest priority date of the Respondents. Based on the record, the Board found Fraser’s HWPO mark to be distinctive since the Respondents provided no evidence or argument to the contrary to show otherwise. Slip opinion at 12.
The Respondent’s revised priority date was about six months before the Petitioner’s specified first use and first use in commerce date of June 5, 2018 in his registration application. However, Fraser then produced testimony and evidence indicating the use of his HWPO mark on athletic shoes in 2016 through a contract with Nike and “sales figures [for the shoes] reaching back to at least one year prior to the Respondents revised alleged date of first use.
Fraser stated that his first use and first use in commerce of the HWPO mark was “at least as early as June 5, 2018,” but his testimony and evidence also indicated use of the HWPO mark on athletic shoes in 2016 through his contract with Nike and “sales figures [for the shoes] reaching back to at least one year prior to the Respondents’ alleged date of first use.”
Although Respondents complained about the vagueness of the Fraser’s evidence and conflicting statements, they did not cross-examine him in an attempt to poke holes in his testimony. As such, the Board held that Fraser established its priority claim and the Respondents’ mark was cancelled.
Conclusions
It is not clear why the Respondents conceded on the likelihood of confusion issue. However, they also apparently had tried to apply a “tacking” argument to obtain an earlier prior date which may have thwarted such an argument. And the USPTO’s examining attorney had found likelihood of confusion which prompted the cancellation proceeding in the first place. The bottom line: Priority claims with corroborative evidence can be very difficult to overcome. It’s up to the other party to poke holes in the testimony. As the Take-Home Points emphasize, maintain solid business records in the event priority of use ever becomes an issue. And remember that priority of use contests can appear years following the registration of a mark.
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Susan Dierenfeldt-Troy
