Intellectual Property Rights Issues

Let us first take the case of James Stick. James has lost his priority right in filing the trademark in USA because his priority right is applicable only within 6 months of filing his first request for such trademark. Hence, if he had filed for the trademark in USA within 6 months of filing the first request, he would have easily won this case. However, since James failed to exercise his priority right by not filing the trademark application in USA within the 6 months period, his case becomes quite weak.

USA confers trademark rights on the basis of use of the market. In other words, if registrant, such as James Stick in this case, is not the first user of mark in USA, unregistered prior user such as Sportsman's warehouse will have priority to use the trademark. As per common law, the priority of use of trademark within a certain territory act as the basis for trademark rights within that territory. On the basis of this law, the case of Sportsman's warehouse becomes stronger as they have been using the trademark in USA for a long period of time. Sportsman's Warehouse is a prior user in this case and James does not have the priority right in this situation. However, If James can show that he has been using the trademark in USA before Sportsman, such as by selling goods in USA, his case becomes stronger than Sportsman.

Sportsman has been selling goods bearing the stickman mark in USA prior to the registration by Jame Stick. Thus, it can challenge James' registration and block the use of the market in USA, if James has not been using the trademark in USA. Trademark act provides major protection to prior users such as Sportsman. Hence, the judge would find the case of Sportsman much stronger than James.

Reference:

http://economie.fgov.be/en/entreprises/Intellectual_property/Innovation_et_propriete_intellectuelle/Priority_rights/#.Uxh1az-SySo http://www.fr.com/Prior-User-vs-Federal-Registrant--Whose-Mark-Is-It-Anyway1/ (In this link, you can see examples of previous rulings as well)