Trademark Act §1057(c) Nationwide Constructive Use and Exceptions
- Filing an application for registration of a mark gives rise to nationwide constructive use of that mark by the applicant in relation to the specified goods and/or services.
- Exceptions exist for prior use by others, the filing of an earlier application or treaty priority under §1126(d)
- Where concurrent use of a mark exists, the junior user is entitled to a registration covering the entire U.S., less the area in which the senior user
has established territorial rights.
- The area of established territorial rights can include a permitted zone of expansion for the senior user in which its prior use has been de minimis, if commercial circumstances warrant it at the time the determination is made (i.e., consumer confusion would likely result from failure to do so). This generally involves concrete, presently existing plans for expansion of use by the senior user.
- Courts most commonly use the following four factors in determining the territorial extent to which the use of a senior user's mark should be protected from the constructive use of a junior user:
- The volume of sales of the goods and/or services in relation to which the senior user's mark is used;
- The growth trends (both positive and negative) in the area of the senior user's use;
- The number of persons in the area of the senior user's use actually purchasing the goods and/or services in relation to the potential number of purchasers; and
- The amount of relevant advertising in the senior user's area of use.
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