First to use: priority of trademark rights in the US

by Mike Smith | World Intellectual Property Review

BSKB partner Michael Smith was recently published in World Intellectual Property Review’s INTA 2024 Special Edition. His article “First to use: priority of trademark rights in the US” highlights the importance of establishing priority of use in trademark enforcement. Mr. Smith discusses how the “complex matter of determining superior rights to a mark can be decided by the filing and registration bases.”

He asserts the importance of ensuring that a trademark owner has priority of use before attempting to enforce their trademark rights, as the consequences of failing to establish priority may result in the alleged infringer gaining superior rights due to the United States’ “first to use” regime rather than “first to file.” The article emphasizes that while § 44 and § 66 enable registration without actual use in the US, they also provide a pathway to establish priority dates predating actual use, underscoring the intricacies of trademark enforcement in the international context.

Mr. Smith provides insightful context into how one may file a successful claim of trademark infringement and the precedents that formed the state of today’s trademark laws.

To read the full article, click below.

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Tags: Article Intellectual Property Priority of Use Trademark Enforcement Trademarks World IP Review

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