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美国质高 - 美国商标申请在先和使用在先的权利保护区别

活动时间:2020-02-18  点击量:360



       以上这些问题,美国质高Nihat Deniz Bayramoglu律师将结合美国商标法为我们做出详细解答。


If a trademark registration at the USPTO is d on 44e and 66a, what kind of rights does the trademark owner have? If the owner of the mark is not using the mark, can the owner still enforce the mark in the USA? What is the use requirement?

SHORT ANSWER: 44e and 66a applicants generally have the same rights as 1a and 1b applicants. The main difference that 44e and 66a applicants do not need to show use for registrations. Generally, a 44e and 66a registrant cannot enforce their rights without showing some kind of use or that non-use is reasonable under the circumstances. Otherwise the use requirements are the same as any other US trademark registration owner.

Long Form Discussion:

Since 1989 the rule is that non-United States nationals applying under Lanham Act § 44, 15 U.S.C.A §1126 are required to state their bona fide intent to use the mark in the United States, but are not required to prove any use in the U.S. to receive a registration.[1]

The most important of the special benefits of § 44 is that under § 44(e), such a foreign national may obtain a United States trademark registration even though the foreign national has never used the mark in American interstate or foreign commerce. That is, a mark duly registered in the country of origin of the foreign applicant may be registered on the Principal Register if eligible, or otherwise on the Supplemental Register.[2]

Differences Between Madrid Protocol § 66(a) and Paris Convention §44(e) Registrations.

There are both similarities and differences between Madrid Protocol registrations under Lanham Act § 66(a), 15 U.S.C.A. § 1141(a) which are imported for registration in the U.S. and Lanham Act § 44(e), 15 U.S.C.A. § 1126(e) Paris Convention registrations granted to non-U.S. persons and firms. The Trademark Board has observed that:“A Section 66(a) registration differs from one under Section 44(e) because it always remains part of and dependent upon the international registration, incontrast to a Section 44(e) registration which stands independent of the underlying foreign national registration.”[3] Like a § 44(e) registration, a Madrid Protocol mark registered under § 66(a) in the United States does not have to show use in the United States prior to registration.[4] However, both § 44(e) and § 66(a) registrations in the U.S. are subject to challenge by cancellation if not used within a reasonable time in the U.S. after registration.[5]

Under Lanham Act § 8, 15 U.S.C.A. § 1058 or Lanham Act § 71, 15 U.S.C.A. § 1141k, non-United States owners are required, as are all registrants, to file during the fifth year of registration an affidavit that the mark is in use in the United States.


Use Within a Reasonable Time in U.S.

While use as a mark in the United States is not required to obtain a Madrid Protocol extension of protectionunder § 66(a), use is required within a reasonable time. As the Trademark Boardobserved: “[O]nce a [§ 66(a)] registration issues, it is treated much the same as any other registration on the Principal Register.”[6]

That is, the protection is subject to a challenge by an interested party who could file a petition for cancellation for abandonment. The Trademark Board has made it quite clear that a section 66(a) registration of a mark that has never been used in the United States, or for which use has been discontinued with no intent to resume, is subject to cancellation for abandonment [7] “even if the international registration remains valid and subsisting.” The three-year period of nonuse that constitutes prima facie evidence of abandonment can begin no earlier than the day the § 66(a) registration was issued.[8]

Incontestability. Madrid Protocol extensions of protection in the United States are eligible for "incontestable" status under the same conditions as for registrations on the Principal Register.[9]

Vulnerability to Cancellation. Because U.S. extensions of protection have the same "effect and validity" as a registration on the Principal Register,[10] they are subject to cancellation proceedings before the T.T.A.B. and in court d on the usual grounds.[11] This vulnerability is expressly recognized in the Protocol.[12]

QUESTION 2: If a Person A applies for a trademark registration at the USPTO but has not used the mark yet (1b application) and Party B who is using the same mark in commerce and Party B files for a trademark registration after the first entity, who will get the registration?

SHORT ANSWER: If both applications are concurrently pending Party B will likely receive a rejection and have to wait until Party A’s mark is published to oppose Party A’s mark d on earlier use. If Party B files after Party A 's registration, then Party B will likely receive a rejection and have to file a cancellation of Party A’s mark. In both instances Party B will prevail due to prior use.

Long Form Discussion:

Apart from the statutory provision of a “constructive use,” it is not registration, but only actual use of a designation as a mark that creates rights and priority over others. Emphasizing the rule that it is use, not federal registration, that creates a legally enforceable “trademark,” the Supreme Court observed that: “Federal law does not create trademarks.”[13]

Most civil law nations follow the rule that ownership and priority of a trademark go to the party who was first to file an application or obtain a registration.[14] But in the United States, the rule of priority is that ownership and priority of a trademark go to the party who was first-to-use. The only exception is that since 1989, priority of use can be obtained by filing an application for federal registration, which, upon registration, confers a “constructive use” date of first use--

But that “constructive use” priority can always be defeated by another party's evidence of a prior actual use.

First-in-Time, First-in-Right.

The basic rule of trademark ownership in the United States is priority of use. For inherently distinctive marks, ownership goes to the first entity to use the designation as a mark. Because non-inherently distinctive marks require secondary meaning, ownership generally goes to the first entity to acquire secondary meaning. The United States Supreme Court first recognized the rule of priority governing trademark ownership in the 19th Century.[15] All common law and registration rights are built upon this foundation of first-in-time, first-in-right.[16]

“First-in-Time, First-in-Right” is an ancient rule of ownership, and can be traced back as far as the Justinian Code ordered by the Sixth Century Byzantine Emperor Justinian. For centuries the rule was rendered in Latin: “Qui prior est tempore, potior est jure.”[17]

This rule of first use has been applied to a wide range of ownership interests, including fisheries, water rights, valuable minerals, parking places and satellite orbits.[18] The “Forty-Niners” were the early prospectors and miners in the 19th Century California gold rush. In a time and place largely devoid of law and order, th eminers instinctively used the rule of first-in-time, first-in-right to allocate ownership of gold deposits and the water needed to mine them.[19] In everyday parlance, the rule of first-in-time, first-in-right is reflected in sayings such as “finders keepers” or “first come, first served.” In many Western societies, people waiting for something order themselves by forming a line in order of arrival: “Wait your turn, I was here first.” The alternative is either mob-like chaotic pushing and shoving or the law of the jungle, with the gun-toting claimants taking everything.

Use as a Mark: To Identify and Distinguish Source.

At common law, ownership of trademark or trade dress rights in the United States is obtained by actual use of a symbol to identify the goods or services of one seller and distinguish them from those offered by others. The way to obtain rights in a business symbolis to actually use it as a mark. “Under the principle of first in time equals first in right, priority ordinarily comes with earlier use of a mark in commerce.”[20]

To create trademark or trade dress rights, a designation must be proven to perform the job of identification: to identify one source and distinguish it from other sources. If it does not do this, then it is not protectable as a trademark, service mark, trade dress or any similar exclusive right. With each sale of goods or services under such a business symbol, the seller builds up greater and greater legal rights in that symbol. In the absence of customer recognition of the symbol, the “owner” of the business has no good will, and thus there is nothing for the “trademark” or “trade dress” to symbolize or represent. Of course, once valid trademark rights have been established, these rights can be soldor licensed to others if the good will symbolized by the mark is kept intact.

Tacking On Prior Versions.

In certain circumstances, the prior use of a slightly different version or format of the mark can be “tacked on” to the present version in order to claim priority of use over a rival. This is permitted if the new form of the mark creates the same commercial impression as the old version.

Falsifying Evidence of Prior Use.

Priority of use is acritical issue in many trademark disputes. The party who can prove it was first to use becomes the owner of a valuable trademark right. Falsifying or fabricating documents to create a false record of prior use can be a ground for dismissal of a case.[21]


For applications for federal registration filed on or after November 16, 1989, a constructive use priority dates from the date of filing of the application. However, this priority is contingent on the later successful registration of the mark.

Thus, under the new procedure inaugurated on November 16,1989, a firm can get an early priority date by filing an intent to use application in the U.S. Patent and Trademark Office (PTO). Then the applicant has some time to actually use the mark and obtain a federal registration. This procedure enables a company to “reserve a mark”before actually using it in trade. As soon as the application is on file in the PTO, it will be included in the data available to others who search before they file or use. Thus, others may be deterred merely by the presence of an intent to use application on file.

Neither application for, nor registration of, a mark at the federal level wipes out the prior nonregistered, common law rights of others. The nonregistered rights of a senior user continue and are not trumped by the later federal registration of a junior user.


If party Alpha files an ITU application to register and has not yet used the designation as a mark and thus not yet obtained its registration, then Alpha has as yet no trademark rights to assert in court against party Gamma, who began use of a similar mark after the date of Alpha's application. Lanham Act § 7(c) states that the priority position of the ITU applicant is only “contingent” on achieving the status of registration. Until then, the applicant's priority over later users or applicants is merely incomplete and inchoate.

However, unlike a court, the PTO Trademark Board will recognize contingent rights and permit party Alpha to oppose a junior application to register filed by party Gamma.

The benefit of a constructive use priority is available for registrations d on both use-d and intent-to-use applications.[22]

QUESTION 3: How is a conflict between prior application and prior use handled at the USPTO or Court in the USA?

SHORT ANSWER: Usually inter-partes proceedings as they relate to registration are handled at by the Trademark Trial and Appeal Board (T.T.A.B). Matters of Infringement and Damages are handled by the U.S. Federal District Courts.

Challenges to USPTO Mark Registration.

Adversary proceedings before the Trademark Trial and Appeal Board (T.T.A.B.) involve challenges to the registration of a mark involving two private parties and hence are called “inter parties” cases. The T.T.A.B. Administrative Judges act as the administrative decision maker. There are three types of “inter partes” cases: (1) oppositions; (2) cancellations; and (3)concurrent use proceedings.[23]

Inter partes opposition and cancellation procedures bear a resemblance to procedures in a federal District Court civil case, but are governed by the T.T.A.B.'s own rules of procedure in the Code of Federal Regulations along with the Federal Rules of Civil Procedure as supplemented by the Trademark Board Manual of Procedure. Limited discovery is permitted. All trial testimony is taken in a manner resembling that of a deposition in a court proceeding and taken down in writing. There is no trial by oral testimony before a decision maker, as occurs in federal court cases. In almost all inter partes cases, pleadings, motions, briefs, evidence and testimony are filed electronically via the internet through the Electronic System for Trademark Trials and Appeals (ESTTA.).

Inter Partes Cases Relate Only to Registration, Not to Common Law Rights in a Mark.

Inter Partes cases concern only the status of federal registration of a mark and do not determine the ability to assert common lawrights in the mark. For example, in a cancellation proceeding, it is a registration that may be canceled, not common law rights in the mark itself.[24] Common-law ownership rests upon use, not upon registration. While a federal registration gives its owner very important legal rights and benefits, the registration does not create the trademark. The cancellation of a registration does not invalidate underlying common law rights in the trademark because those rights do not flow from federal registration.[25]

Eventhough inter partes proceedings relate only to the status of the challenged application or registration, it is possible that factual issues of validity and likelihood of confusion determined by the T.T.A.B. can form the basis for issue preclusion which will be binding on a court in later judicial proceedings over the status of the mark itself.[26]


An “opposition” against an application is filed within a defined window of time after an application has passed through the ex parte examination of the Examining Attorney and has been published for opposition. The opposer is in the position of a plaintiff and the applicant is in the position of a defendant. The opposer may rely upon an alleged legal defect or deficiency in the application. Usually, the opposer will assert one or more of the bars to registration listed in Lanham act § 2,15 U.S.C.A. § 1052. If the T.T.A.B. sustains the opposition, then the application does not mature into a registration. If the opposition is dismissed, the application proceeds to registration.


A petition for “cancelation” of mark registration can be filed at any time after a registration has been granted by the USPTO. But if the registration is more than five years old, the grounds for cancellation are limited. If the challenged registration is more than five years old, LanhamAct § 14 provides that the registration can be cancelled only on the grounds listed in the statute.[27] The grounds usually relied on to petition for cancellation at any time are: the registered mark has become a “generic name” of goods or services; the registered mark is “functional;” the mark has been “abandoned;” and that the registration was obtained through fraud on the USPTO.

During the first five years of the registration, the petition to cancel can be d on any provision in the Lanham Act which would have barred registration in the first place. A petition to cancel a registration less than five years old is usually d on two challenges: the mark is barred from registration under one of the statutory bars of Lanham Act § 2, 15 U.S.C.A. § 1052; and (2) that the mark comes within one of the statutorily listed grounds upon which a registration may be cancelled at any time.

The petitioner is in the position of a plaintiff and the registrant is in the position of a defendant. If the T.T.A.B. grants the petition, then the registration is cancelled. But, as mentioned above, this does not directly affect any common law rights the owner of the mark may have. What is cancelled is the registration, not the trademark itself.

Concurrent Use Proceedings.

Under the common law, parties using the same mark on similar goods or services but in separate territories of the United States, can continue their separate uses if no confusion is likely to result. A concurrent use proceeding in the USPTO is designed to allow the registration process to reflect this reality of two parties with otherwise conflicting marks which are territorially separated to each obtain a registration. Two or more parties with otherwise conflicting marks may receive registrations valid for separate territories of the United States. In the usual case in which neither party owns a registration, the general rule is that the senior user is prima facie end to a registration covering the entire U.S. subject to an exception for areas of proven use by the junior user. However, there are significant exceptions to the general rule, such as where the senior user remains static in one location while an unaware and good faith junior user expands across the nation. For example, in one case, the good faith junior user nationally of the mark “3 PALMS” for hotels was using the mark to franchise eighthotels located in California, Georgia, South Carolina and Florida. The junior user filed a concurrent use application, naming the senior user of the mark “3 PALMS” for a single hotel in Scottsdale, Arizona. Because the senior user was static in its single hotel location for several years while the junior user was expanding across the nation, the T.T.A.B. awarded a registration for the state of Arizona to the senior user and the remainder of the U.S. to the junior user.[28]

A concurrent use proceeding is initiated by an applicant for Principal Register registration filing an application that is limited as to territory. In addition to the regular elements required in any application, the applicant must state, to the extent of its knowledge, the extent of the concurrent use by others.

The applicant to register as a concurrent user is in the position of plaintiff. A concurrent use proceeding follows the same procedures as in other inter partes proceedings and is decided by the Trademark Trial and Appeal Board.

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[1]In re Cyber-Blitz Trading Services, 47 U.S.P.Q.2d 1638, 1998 WL 493132 (Comm'r Pat.& Trademarks 1998) (“Applicants who rely solely on Section 44 are not required to demonstrate use in order to obtain registration.”); See T.M.E.P. §1009 (Oct 2015 ed.) (“Although § 44 applicants must assert a bona fide intention to use the mark in commerce, § 44 applicants are not required to allege use or provide specimens or dates of use prior to registration on either the Principal or Supplemental Register in an application d solely on §44.”).

[2] Lanham Act§ 44(e), 15 U.S.C.A. § 1126(e)

[3] Saddlesprings, Inc. v. MadCroc Brands, Inc., 104 U.S.P.Q.2d 1948, 1951, 2012 WL 5196161 (T.T.A.B.2012).

[4] (§ 44(e) registrants enjoy a benefit domestic entities do not: exemption from the usual requirement of use in the U.S. before registration can be granted.)

[5]Madrid Protocol registered marks must be used in the U.S. within a reasonable time after registration: Saddlesprings, Inc. v. Mad Croc Brands, Inc., 104 U.S.P.Q.2d 1948, 1951-1952, 2012 WL 5196161 (T.T.A.B. 2012) (A section 66(a) registration of a mark that has never been used in the United States, or for which use has been discontinued with no intent to resume, is subject to cancellation for abandonment “even if the international registration remains valid and subsisting.”); Dragon Bleu (SARL) v. VENM, LLC, 112U.S.P.Q.2d 1925, 1930, 2014 WL 7206399 (T.T.A.B. 2014) (“And like all registrants, a Section 66(a) registrant must use the registered mark in commerce in order to avoid abandonment of its registrations.”) Section § 44(a): Use of a mark registered under § 44(a) is required within a reasonable time or else the registration maybe cancelled.

[6] Dragon Bleu (SARL) v. VENM,LLC, 112 U.S.P.Q.2d 1925, 1930, 2014 WL 7206399 (T.T.A.B. 2014) (“Andlike all registrants, a Section 66(a) registrant must use the registered mark in commerce in order to avoid abandonments of its registrations.”). See Edelman, Why Wait Three Years? Cancellation of Lanham act 44(e) and 66(a) Registrations d on Non-use Prior to the Three-Year Statutory Period for Presumption of Abandonment, 104 Trademark Rptr, 1366 (2014).

[7] Saddlesprings,Inc. v. Mad Croc Brands, Inc., 104 U.S.P.Q.2d 1948, 1951, 2012 WL 5196161(T.T.A.B. 2012).

[8] Dragon Bleu (SARL)v. VENM, LLC, 112 U.S.P.Q.2d 1925, 1931, 2014 WL 7206399 (T.T.A.B.2014); Koninkijke Philips Electronics N.V. v. Hunt Control Systems,Inc., 2016 WL 3545529, *11 (D.N.J. 2016) (Following DragonBleu. “The Court will not consider events occurring before a trademark registration issues as part of a period of nonuse.”).

[9] Lanham Act § 73, 15 U.S.C.A. § 1141m

[10] Lanham Act § 73, 15 U.S.C.A. § 1141m

[11] Saddlesprings,Inc. v. Mad Croc Brands, Inc., 104 U.S.P.Q.2d 1948, 1951, 2012 WL 5196161(T.T.A.B. 2012) (A Madrid Protocol § 66(a) registration is subject to the same grounds for cancellation as any other type of U.S. registration.).

[12]Madrid Protocol Article 5(6) (requiring that in such a cancellation proceeding, the holder of the international registration is "afforded the opportunity of defending his rights.”)

[13]Matalv. Tam,137 S. Ct. 1744, 1751, 198 L. Ed. 2d 366, 45 Media L. Rep. (BNA) 1849, 122U.S.P.Q.2d 1757 (2017). See B & B Hardware, Inc. v.Hargis Industries, Inc., 135 S. Ct. 1293, 1299, 1310, 191 L. Ed. 2d 222,113 U.S.P.Q.2d 2045 (2015) (“Though federal law does not create trademarks, …. Congress has long played a role in protecting them.”)

[14]For example, Chinese trademark law maintains a “strict adherence to the first-to-file principle.” Ferrante, Strategies to Avoid Risks Related to Trademark Squatting in China, 107 Trademark Rptr 726, 730 (2017).

[15]In re Trade-Mark Cases, 100 U.S. 82, 94, 1879 WL 16583 (1879) (“At common law the exclusive right to it grows out of the use of it, and not its mere adoption…. It is simply founded on priority of appropriation.”) See: United DrugCo. v. Theodore Rectanus Co., 248 U.S. 90, 100, 39 S. Ct. 48 (1918) (“Undoubtedly, the general rule is that, as between conflicting claimants to the right to use the same mark, priority of appropriation determines the question.”)

[16] See B & BHardware, Inc. v. Hargis Industries, Inc., 135 S. Ct. 1293, 1299, 1310, 191L. Ed. 2d 222, 113 U.S.P.Q.2d 2045 (2015) (“One who first uses a distinct mark in commerce thus acquires rights to that mark.” Citing treatise.); Hana Financial, Inc. v. Hana Bank, 135 S. Ct. 907, 909, 190 L. Ed. 2d 800, 113U.S.P.Q.2d 1365 (2015) (“Rights in a trademark are determined by the date of the mark's first use in commerce. The party who first uses a mark in commerceis said to have priority over other users.”).

[17]“He who is first or before in time, is stronger in right.” Mostert traces it back to Justinian's Digest. F. Mostert, Famous and Well-Known Marks, 2-34 (2d ed. 2004)

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