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Section 33 (b)(5) Defenses For Common Law Trademark Owners

Several potential clients have asked me questions regarding their trademark rights similar to the following: “I have been selling goods under my trademark for several years.  I never registered my trademark. Another business sent me a cease and desist letter stating that my use of my unregistered trademark infringes on their registered trademark’s rights.  What do I do?” I hear this question quite often.  The answer depends on several factors. However, this article focuses on defenses that an unregistered trademark owner may have under Section 33(b)(5) of the Trademark Act Lanham Act.  15 U.S.C. §§ 1065, 1115(b)(5).

First, it is a bedrock principle of service mark and trademark law that the first user of a service mark or trademark owns the trademark or service mark if conflicts arise with rival claimants.  I will use the word “mark” to collectively refer to the term service mark and trademark.  Once the basic rights in a mark are acquired upon its initial use, a business may supplement or extend those rights by registration of the trademark.  Registration of a mark with the United States Patent and Trademark Office has several advantages (which will not be discussed in this article).  However, an unregistered mark may still have rights by common law trademark law.

Section 33(b)(5) codifies the benefits that a common law trademark owner may have. Section 33(b)(5) of the Lanham Act states the following:

(5) That the mark whose use by a party is charged as an infringement was adopted without knowledge of the registrant’s prior use and has been continuously used by such party or those in privity with him from a date prior to (A) the date of constructive use of the mark established pursuant to section 1057(c) of this title, (B) the registration of the mark under this chapter if the application for registration is filed before the effective date of the Trademark Law Revision Act of 1988, or (C) publication of the registered mark under subsection (c) of section 1062 of this title: Provided, however, That this defense or defect shall apply only for the area in which such continuous prior use is proved;

Section 33(b)(5) is a defense for a defendant or an accused infringer that has been unknowingly using a mark in a geographic area different from the geographic area of the registered mark.  For section 33(b)(5) to apply, the accused infringer would have to be unknowingly and continuously using the mark in a different geographic area before the registered mark’s owner filed an application to register the mark. Take the following example:

A begins use of a mark in a one geographic area.  Then B begins use of the same mark in a different geographic area in good faith, without knowledge of A’s use. Both A and B would have common law rights to the mark in their respective territories. Then A applies for and obtains a federal registration for the mark.

Under Section 33(b)(5), in the example above, B retains rights only in the territory in which it was the prior user up to A’s application date.

Section 33(b)(5) may be very helpful to owners of unregistered marks.  However, keep in mind that Federal registration of the mark by A has the practical effect of FREEZING B’s rights thereby terminating ANY right to future expansion beyond B’s common law trademark’s existing territory.  While, registration of a mark is not legally necessary, the examples briefly discussed in this article illustrate the importance of registering a mark to protect of your brand. The trademark attorneys at The Plus IP Firm have advised numerous clients regarding their common law and registered trademark rights.  If you have any questions regarding your trademark rights given the use of your trademark on the internet, the attorneys at The Plus IP Firm are available to answer any questions that you may have.  To schedule a free consultation, click HERE.  For more information about Derek Fahey, this article’s author, click HERE.

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