Trademark lawyers will tell clients that the Junior (i.e., second) user of a mark has rights in the
mark depending whether the mark is being used in the same territory as the
Senior (first) user. First in use and first to file a registration with the USPTO matters.
Use matters because the Senior User has rights superior to all others, and can
generally exclude others from using their mark, but only in the territory where
they provide products or services. If the junior user registers the mark
federally prior to the senior user, then the junior user obtains nationwide
priority, and can exclude all uses of the mark except the senior user's use of
the mark in the senior user's own territory. That is, the user of, say, "Burger King" in a locality, if first in that place can continue to use the mark forever as long they started before anyone registered the mark for, say, restaurants. But, if someone else files a registration for "Burger King," and the Senior User has not registered, it is the Junior User, or first to register, that obtains expansion rights.
In Burger King of Florida, Inc. v. Gene Hoots and Betty Hoots d/b/a Burger King in Mattoon, Illinois, a couple has started a Burger King business before there was the franchise. In a fight with the franchise company later, they were able to keep the name in a 20 mile radius around Mattoon, and the franchise company was excluded. Here they are, the only Burger King in Mattoon:
Now, to apply this doctrine the marks must be equivalent. "Mosaic" as a mark in real estate is different than "Mosaic" as a mark. But, trademark law also has a doctrine known as “tacking,” which means that a
party can “tack,” or expand, the use of an older mark onto a new mark for the
purposes of determining priority. For example, Hana Bank registered the mark “HANA OVERSEAS KOREAN CLUB,” and later expanded the mark to “HANA WORLD CENTER.” Then, it became became "HANA BANK," with priority all going back to the first registration for the Korean Club.
This odd rule is that if a party makes minor changes to a trademark, it can continue to claim priority in the mark even if the current version of the mark differs slightly from the way the mark was originally used. In order for the tacking doctrine to apply, however, the marks must be so-called “legal equivalents.” In order to be considered legal equivalents, the marks must create the same commercial impression and cannot differ materially from one another.
Of course, the inevitable happened, and someone registered “HANA FINANCIAL” which the Senior Hana argues is confusingly similar to “HANA BANK.” Hana Bank first used the HANA BANK mark several years after Hana Financial adopted its mark; but, Hana Bank claims priority by virtue of the tacking doctrine. The Supreme Court is taking this matter up on a technical trademark issue; but, the lesson is that differenting one's mark only by category of use has litigation dangers. The best way to be first is to be distinctive and avoid marks that can morph into something like the one you want.
This odd rule is that if a party makes minor changes to a trademark, it can continue to claim priority in the mark even if the current version of the mark differs slightly from the way the mark was originally used. In order for the tacking doctrine to apply, however, the marks must be so-called “legal equivalents.” In order to be considered legal equivalents, the marks must create the same commercial impression and cannot differ materially from one another.
Of course, the inevitable happened, and someone registered “HANA FINANCIAL” which the Senior Hana argues is confusingly similar to “HANA BANK.” Hana Bank first used the HANA BANK mark several years after Hana Financial adopted its mark; but, Hana Bank claims priority by virtue of the tacking doctrine. The Supreme Court is taking this matter up on a technical trademark issue; but, the lesson is that differenting one's mark only by category of use has litigation dangers. The best way to be first is to be distinctive and avoid marks that can morph into something like the one you want.
