Nationwide Priority

Brock, Jack

For help with intellectual property questions or other civil litigation issues, call Jack Brock, Attorney with Colombo Kitchin Attorneys in Greenville, NC, at 252-321-2020.

If you have a company that has a brand, you may want to register your brand name as a trademark.  Registering your trademark has certain benefits, one of which is nationwide priority.  Nationwide priority means that the owner of a registered trademark has priority over other unregistered marks that began use after the filing date.  It also means that an owner of the registered mark has priority over other registered marks that were filed subsequent to the owner’s filing date.

Priority is important as the owner of the registered trademark which has priority over a junior trademark which infringes will be able to request that the court enjoin the junior infringing mark, and/or ask for damages.  For example, in one Fourth Circuit case, Lone Star Steakhouse & Saloon, Inc. v. Alpha of Va., Inc., 43 F. 3d 922 (1995), a national chain entered into the D.C. market area and forced another company to stop using its name, as the other company’s junior mark infringed on the national chain’s registered mark. Needless to say, the national chain’s registered mark had priority.

National priority means that an owner of a mark with priority can enjoin another company’s mark if the owner with priority can show a likelihood of entry into the disputed territory.  As the court stated in Lone Star Steakhouse, the registrant has a nationwide right, but the injunctive remedy does not ripen until the registrant shows a likelihood of entry into the disputed territory. . . . [The junior user’s] use of the mark can continue only so long as the federal registrant remains outside the market area.”

Injunctive relief, and/or damages will only be available if the owner can show that the junior mark infringes on the owner’s mark.  The “likelihood of confusion” test is used to determine whether there is infringement, and this test will be discussed in greater detail in subsequent articles.  What is important to take away from this article is that 1) if a company is interested in expanding into more market areas, or the company is concerned about other companies expanding into other market areas, and 2) the company has a recognizable brand name that they wish to protect, then the company should probably register their brand name. Registration will be strategically offensive (by allowing companies to expand with their brand into new market areas), and tactically defensive (by allowing companies to protect the use of their brand in their current market areas).