Geography Priority and Registration Trademark Law in the US is a hybrid system

Geography priority and registration trademark law in

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Geography, Priority, and Registration Trademark Law in the U.S. is a hybrid system that provides protection based on the geographic area in which a mark has been used in connection with the sale of goods or services, and then provides extended protection when the mark is registered with the trademark branch of the PTO. In almost all other countries, protection for a trademark is established by registration. In some of these countries, this is all that is required, but in others there is a requirement that the mark actually be used in connection with the sale of goods or services within a designated time after registration.
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Suppose that X Co. begins to use the mark “Morpheus” for its computer services business in northern California. Assume that X is the first one to use this or a similar mark for the same or similar goods or services. X’s mark is protected in that geographic area plus a surrounding zone to account for reasonably expected future expansions. If another company, Y, subsequently starts using the same or similar mark in connection with the sale of the same or closely related services, Y does not infringe on X’s mark if Y uses it in a different geographic area and doesn’t otherwise compete for the same customers as X. We call X the “senior user” and Y the “junior user.” In the same scenario, suppose that X Corp. expands its business and the use of its mark to other states such as Oregon and Washington. X’s mark is now protected in this wider geographic area (plus a future expansion zone). Moreover, once X has made a substantial use of the mark in interstate commerce, X can seek federal registration for its mark. X’s mark obviously cannot be registered if it is generic. Also, if the mark is descriptive (or primarily geographic or primarily someone’s last name), X must prove “acquired secondary meaning” to obtain registration. Assuming that these principles provide no obstacle, X can obtain federal registration for its “Morpheus” mark if there is not another mark registered either with the PTO or with a state trademark registration authority that is the same or confusingly similar for the same or related goods or services. If X was both the first to use the mark and the first to register it, X has nationwide exclusive rights. Suppose, however, that X did not register before Y began using the same or a similar mark in connection with the same or related goods or services in New York. If Y, the junior user, makes a substantial interstate use of the mark, it becomes eligible for federal registration. Y can obtain federal registration if there is no evidence showing that Y had actual knowledge of X’s mark when Y began using the mark and if X had not registered its trademark with a state trademark office. If Y obtains federal registration, it has nationwide rights with the exception of the geographic area in which X had protection at the time Y filed its registration application.
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  • Spring '08
  • Trademark law, trademark infringement

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