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Threaten Trademark Infringement Only If Certain You Are First User

Before threatening someone with trademark infringement, be certain you used the mark before they did. As with any dispute, know the facts before you make definitive declarations, and understand the nuances of trademark law. The key principle of trademark law is that the first user of a mark for goods or services in a territory has priority over subsequent users of a similar mark for similar goods or services, if there is a likelihood consumers will be confused.

Know that a federal registration does not provide absolute priority over all other earlier users; a registrant does not have priority over an unregistered prior user in the territories where the prior user already has customers. Investigate when the adversary first started using the mark. Google searches can help. A search on the Wayback Machine and other online research can also help discover when a presumed infringer first started using the mark.

Prior to writing a demand letter or filing suit, the owner of even a registered mark should make sure no one has been using the mark in any territory which the owner covets. One of the worst things to do is claim that the other side must stop using its mark because the two marks are likely to be confused, and then discover that the other party has priority of use — and you have just admitted they both cannot coexist. You don’t want to receive a response that says “You’re right, there is likelihood confusion, but we were first. Now you have to stop.”

Ned T. Himmelrich
410-576-4171 • nhimmelrich@gfrlaw.com