Common-Law First Use Defeats Federal Registration; Seventh Circuit Reaffirms Presumptive Prejudgment Interest Under 15 U.S.C. § 1117(a)

1. Introduction

Grunt Style LLC v. TWD, LLC (7th Cir. June 10, 2026) is an eight-year trademark dispute over the phrase "This We'll Defend", a well-known historical slogan associated with the United States Army. Both parties sold patriotic apparel bearing the phrase. After parallel litigation (initially filed in different districts) was consolidated in the Northern District of Illinois, the district court concluded at summary judgment that Grunt Style had common-law priority based on earlier use, dismissed TWD’s claims, and cancelled TWD’s federal registration. A jury later found TWD liable for infringement on Grunt Style’s counterclaims, and the court entered final judgment awarding damages, interest, and a permanent injunction.

On appeal, TWD challenged a broad range of rulings, but the Seventh Circuit framed the dispute as turning primarily on who used the mark first in commerce—and secondarily on remedial issues, including whether prejudgment interest was available under the Lanham Act’s general damages provision, 15 U.S.C. § 1117(a).

2. Summary of the Opinion

  • Priority: The Seventh Circuit affirmed summary judgment that Grunt Style established prior, superior common-law rights through public-facing use beginning as early as 2011 (including use on clothing, tags, letterhead, invoices, trade shows, and a nationally accessible website), while TWD did not begin using the mark on clothing until September 2014.
  • Federal registration: The court rejected TWD’s reliance on its May 2015 federal registration because registrations remain subject to preexisting common-law rights, and any presumption of validity dissipates when evidence of invalidity (such as prior use) is introduced.
  • Ornamentality / expert exclusion: The court upheld exclusion of TWD’s expert (Eric Wachspress) and concluded Grunt Style’s pre-2014 uses were source-identifying (including small print on shirt tags), not merely ornamental.
  • Continuous use: The court rejected TWD’s “continuous use” challenges, including arguments tied to Grunt Style’s dissolution and reincorporation and variations in sales/product presentation.
  • Trial management and other rulings: The court largely deferred to the district court’s discretion on discovery, motions in limine, and jury instructions.
  • Prejudgment interest: The court reaffirmed that, in the Seventh Circuit, prejudgment interest is “presumptively available” for trademark infringement under § 1117(a), adhering to circuit precedent despite a noted inter-circuit split.

3. Analysis

3.1. Precedents Cited

S.C. Johnson & Son, Inc. v. Nutraceutical Corp., 835 F.3d 660 (7th Cir. 2016)

This was the opinion’s central Seventh Circuit anchor on priority and the relationship between registration and common-law rights. The court used it for three key propositions:

  • Ownership arises from use, not registration: The court quoted S.C. Johnson for the rule that “trademark ownership is not acquired by federal or state registration, but rather from prior appropriation and actual use in the market.”
  • Applications/registrations are subordinate to existing common-law rights: The court relied on S.C. Johnson’s admonition that an application is “always subject to previously established common law trademark rights of another party.”
  • Evidence of use does not require high sales volume: The court invoked S.C. Johnson to reject TWD’s “insufficient volume” argument, stressing that online sales through a publicly available, nationwide website and other public-facing uses can suffice.
  • Continuous use—avoid overly narrow metrics: Quoting S.C. Johnson, the court criticized arguments that “focus[] exclusively” on a single type of evidence, “misse[s] the forest while looking for one specific type of tree.”

Hana Financial, Inc. v. Hana Bank, 574 U.S. 418 (2015)

Cited for the basic priority principle: “Rights in a trademark are determined by the date of the mark’s first use in commerce.” The opinion uses Hana Financial to frame priority as the threshold issue before disputing registration or later conduct.

Johnny Blastoff, Inc. v. Los Angeles Rams Football Co., 188 F.3d 427 (7th Cir. 1999)

Johnny Blastoff supplied the Seventh Circuit’s practical, fact-intensive framework for determining whether a party has “demonstrated prior and superior rights” “on a case by case basis, considering the totality of the circumstances.” The court also borrowed Johnny Blastoff’s articulation of what counts as adequate use: “adoption” plus “use in a way sufficiently public to identify or distinguish” the goods.

Importantly, the court used Johnny Blastoff to rebut TWD’s effort to turn the case into a sales-volume contest: “Evidence of actual sales is not necessary to establish ownership.”

Georgia-Pacific Consumer Prods. LP v. Kimberly-Clark Corp., 647 F.3d 723 (7th Cir. 2011)

The court used Georgia-Pacific Consumer Prods. LP v. Kimberly-Clark Corp. for the evidentiary effect of registration: the presumption of validity “evaporates” once evidence of invalidity is presented—here, Grunt Style’s prior use.

Blue v. Hartford Life & Accident Ins. Co., 698 F.3d 587 (7th Cir. 2012)

Blue supported the court’s broad deference to trial management: the Seventh Circuit “intervene[s] only when it is apparent the judge has acted unreasonably.” This underwrote affirmance of the challenged discovery, in limine, and instructional rulings.

Gorenstein Enterprises, Inc. v. Quality Care-USA, Inc., 874 F.2d 431 (7th Cir. 1989)

Gorenstein Enterprises, Inc. v. Quality Care-USA, Inc. was decisive on prejudgment interest. The court treated Gorenstein’s rule as binding: prejudgment interest is “presumptively available” in Lanham Act cases under § 1117(a).

Kars 4 Kids Inc. v. America Can! Cars for Kids, 8 F.4th 209 (3d Cir. 2021) and Georgia-Pacific Consumer Prods. LP v. von Drehle Corp., 781 F.3d 710 (4th Cir. 2015)

These cases were cited to acknowledge a split: some circuits read § 1117(a) as not authorizing prejudgment interest because Congress expressly mentioned prejudgment interest in § 1117(b) (counterfeiting) but not in § 1117(a). The Seventh Circuit did not adopt that view, treating it as insufficient to unsettle binding circuit law.

Merck Eprova AG v. Gnosis S.p.A., 760 F.3d 247 (2d Cir. 2014) and United Phosphorus, Ltd. v. Midland Fumigant, Inc., 205 F.3d 1219 (10th Cir. 2000)

These decisions were cited as counterweight authority permitting or favoring prejudgment interest under § 1117(a), reinforcing that the issue is contested nationally and that the Seventh Circuit’s approach is not isolated.

United States v. Orona, 118 F.4th 858 (7th Cir. 2024)

Orona provided the intra-circuit stare decisis principle: it is “rarely appropriate” to overrule circuit precedent merely to switch sides in an inter-circuit conflict. This enabled the panel to dispose of TWD’s attack on Gorenstein succinctly: absent a developed request to overrule, Gorenstein controls.

Soo Line R.R. Co. v. Consol. Rail Corp., 965 F.3d 596 (7th Cir. 2020)

Soo Line R.R. Co. v. Consol. Rail Corp. was cited for waiver/forfeiture principles: the court declined to reach certain defenses where TWD failed to present coherent factual and legal arguments below.

Alexander v. Erie Ins. Exch., 982 F.2d 1153 (7th Cir. 1993)

Alexander v. Erie Ins. Exch. supported the court’s statement that it could not review another circuit’s transfer decision, and noted that TWD had not sought re-transfer in Illinois.

U.S. Patent & Trademark Off., Trademark Manual of Examining Procedure § 1202.03(a) (May 2026) and McCarthy on Trademarks and Unfair Competition § 7:24

Though not judicial precedent, these authorities informed the court’s ornamentality analysis. The court invoked the TMEP’s “size, location, and dominance” considerations and McCarthy’s collected cases to conclude Grunt Style’s uses were source-identifying.

3.2. Legal Reasoning

  1. Priority is the organizing question. The court treated first use as dispositive because, under Seventh Circuit and Supreme Court authority, trademark rights arise from marketplace use. Registration may create procedural and evidentiary advantages, but it cannot defeat an earlier user’s common-law rights.
  2. Grunt Style’s evidence satisfied “public” use, not mere private preparation. The court emphasized evidence that the mark appeared in multiple outward-facing channels: apparel, tags, letterhead, a nationally accessible website, invoices, and trade shows. The “totality of the circumstances” approach allowed these categories of evidence to reinforce one another.
  3. Sales volume is not the gatekeeper. TWD attempted to reframe priority as requiring a threshold level of sales prior to September 2014. The court rejected that approach as inconsistent with Seventh Circuit precedent recognizing that trademark ownership can be established without high sales volume—and, in some circumstances, without proof of actual sales—so long as the use is sufficiently public and source-identifying.
  4. Ornamentality is context-dependent; expert-driven legal conclusions are disfavored. TWD’s ornamentality theory relied on an excluded expert report. The court upheld exclusion on two grounds: (i) failure to establish qualifications under Federal Rule of Evidence 702, and (ii) the report’s repeated drift into impermissible legal conclusions about trademark rights. On the merits, the court concluded the mark’s placement (including small print on tags) supported source identification.
  5. “Continuous use” does not require static, unchanging commercial presentation. The court refused to treat corporate dissolution/reincorporation and changes in sales/product mix as breaking continuity where the record showed consistent public-facing use by the successive entities. The thrust: continuity is measured by ongoing trademark use in commerce, not by business formalities or perfectly uniform marketing.
  6. Remedies—prejudgment interest—follow circuit precedent. On prejudgment interest, the court acknowledged the statutory-interpretation debate and a circuit split but treated the matter as settled in the Seventh Circuit by Gorenstein. The panel also underscored an institutional norm (Orona): circuit law is not lightly overruled, particularly when the appellant has not squarely preserved or developed the argument to do so.

3.3. Impact

  • Registration remains a shield with limits. The decision reinforces a recurring Seventh Circuit message: federal registration does not confer invulnerability. Parties adopting slogans or phrases—especially those with existing cultural salience—remain exposed to earlier users’ common-law claims.
  • Online presence can meaningfully establish priority. The court’s emphasis on a “publicly available website” accessible nationwide signals that even modest early commercialization, if public and source-identifying, can carry priority—particularly for apparel brands that launch online before scaling.
  • Ornamentality disputes will turn on concrete presentation evidence. The opinion highlights the practical factors—placement, size, dominance, and tag usage—that can rebut claims that a phrase is merely decorative. Apparel litigants should preserve contemporaneous product photos, tag samples, and webpage captures that show source-indicating use.
  • Prejudgment interest remains a meaningful lever in Seventh Circuit Lanham Act cases. By reaffirming Gorenstein notwithstanding contrary decisions elsewhere, the court preserves prejudgment interest as a routinely available component of full compensation under § 1117(a), potentially increasing settlement value and exposure in infringement actions filed in this circuit.
  • Litigation conduct matters: waiver/forfeiture and underdeveloped defenses. The court’s reliance on waiver/forfeiture principles signals that parties must coherently support affirmative defenses and preserve transfer/venue arguments in the transferee court if they want appellate review.

4. Complex Concepts Simplified

Common-law priority (first use in commerce)
Trademark rights in the U.S. generally arise from actually using a mark to identify the source of goods/services in the marketplace—not from filing paperwork first. The first qualifying user typically has superior rights in the geographic areas of use (and, depending on the facts, more broadly).
Federal registration and the “presumption of validity”
A federal registration provides benefits (including evidentiary presumptions), but those presumptions can disappear once the other side produces evidence that the registration is invalid or limited—such as proof that someone else used the mark first.
“Sufficiently public” use
Courts distinguish between private preparation (e.g., internal brainstorming) and market-facing use that lets consumers associate the mark with a source. Public-facing use can include websites, trade shows, invoices, labels, and product tags—depending on context.
Ornamentality
On apparel, words can function either as a brand identifier (a trademark) or as decoration (ornamental matter). Placement matters: a phrase splashed across a shirt may look decorative, while the same phrase on a hang tag, collar label, or discreet brand placement can indicate source. The opinion treats “size, location, and dominance” as key cues.
Continuous use vs. abandonment
“Continuous use” asks whether the mark’s use in commerce persisted, not whether sales were perfectly steady or marketing was unchanged. “Abandonment” is an affirmative defense alleging the owner stopped using the mark (often with intent not to resume). Here, the court rejected attempts to infer discontinuity from corporate restructuring and ordinary business variation.
Prejudgment interest
Prejudgment interest compensates for the time-value of money between injury and judgment. In the Seventh Circuit, it is “presumptively available” under § 1117(a) for trademark infringement, even though other circuits have read the statute differently.
Stare decisis within a circuit
A three-judge panel generally must follow prior circuit decisions. Overruling typically requires special procedures (often en banc review) and is not done simply to align with other circuits.

5. Conclusion

The Seventh Circuit’s decision affirms a priority-centric view of trademark ownership: first public, source-identifying use controls, and federal registration cannot displace an earlier common-law user. The court also reinforces practical evidentiary lessons for apparel marks—particularly the importance of tags, consistent public-facing use, and website-based commercialization—and underscores that, in this circuit, prejudgment interest remains presumptively available under 15 U.S.C. § 1117(a) despite an acknowledged inter-circuit split.