Trademark application: first use date V.S. first use in commerce date?

You are generally right that use in commerce determines priority rights (to a certain degree) in a trademark. Unfortunately, someone can still register their trademark based on their subsequent use of a mark in commerce that gives them the presumption of exclusive rights to the mark throughout the entire U.S., even initially against those who have used the mark in commerce earlier. The good news is that you can overcome this challenge by filing a concurrent use application and prevailing in a concurrent use proceeding before the USPTO's trademark administrative board (the Trademark Trial and Appeal Board - TTAB), which may grant you exclusive rights in the region were you have actually used the mark or where you may be expected to grow based on the circumstances of your case. Unfortunately, it is hard to tell what your chances of succeeding in a concurrent use application or proceeding would be without further information. You will want to work with a qualified intellectual property attorney who is familiar with TTAB proceedings to at least evaluate your case and determine next steps. I am happy to provide you a free consultation. Good luck!

The specific facts that are necessary to determine the true state of affairs must be disclosed to a savvy trademark attorney who knows interference proceedings and make sure that the acts necessary to preserve your rights are taken within the statutory period. You have to determine ASAP enough facts so you can determine if they are in you favor or not and how much they truly will cost you to assert. Filling a legal battle which could cost you lots o money is more of a business than a legal decision,

This is a common problem. First use in commerce is what counts, but the trademark examiner is not in a position to know that you used the trademark in commerce before this applicant. Thus, the applicant will succeed in obtaining a trademark unless you do something about this. One approach would be for you to file a trademark application claiming an earlier use in commerce, and then institute in interference (or as my colleague calls it, a concurrent use proceeding). If the other party has already obtained an issued trademark, you can institute a cancellation proceeding against the owner of the issued trademark. You can also bring a challenge in Federal District Court challenging your competitor's trademark. But these administrative and litigation remedies are expensive----companies pay hundreds of thousands of dollars in legal fees in cases such as this. That is why my preferred approach is to try to reach an amicable settlement among the parties that allows each party to use the trademark in their geographic location or industries, and/or cross licenses the use of the trademark to each other. Unless you have a deep financial war chest, you need to retain counsel and work to settle this problem.

The others have offered good insights. I would stop and go no further until you have consulted your own IP lawyer in private to discuss all the relevant details and your best options. This is not a satiation for which you can really do much on your own, not if you are taking this seriously. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with. Best regards, Frank Natoli-Lapin, LLC