Monthly Archives: February 2012

In a shoot-off between two users of the same trademark, everything hinges on who used the mark first. It seems like this would be a simple determination: whoever can show that he or she used the mark first in commerce wins. Case closed. Like most things in the law, it is not quite that cut and dried. In order to establish that you are the senior user of a mark, you not only have to show that you used the mark first in commerce, you have to show that your use was “systematic and continuous.” People commonly assume that “continuous” means that you used the mark and you have never abandoned use of the mark. Because “abandonment” means non-use of a mark for some period of time (usually three years but can be shorter under some state statutes) with an intent not to resume use, most people think the “continuous” element is a lost cause when trying to attack another’s user’s seniority. However, an absence of abandonment is not the standard when determining whether the first one to use the mark made systematic and continuous use of it. Instead, in this context, “continuous” means “use without significant interruption.” 5 J. Thomas McCarthy on Trademarks, § 26:55 (2008) citing Casual Corner Associates, Inc. v. Casual Stores of Nevada, Inc., 493 F. 2d 709 (9th Cir. 1974) (non-use for one year was not “continuing” use).

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