Trademark Rights: First to File versus First to Use
Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.
This is Brian Hall, an attorney with Traverse Legal, PLC; a law firm handling trademark work throughout the United States on behalf of clients throughout the world.
Within the United States, it is the first to use who has rights in a trademark. The reason this becomes important is because people tend to go to the United States Patent and Trademark Office or USPTO database and look up registered trademarks or even applied for trademarks to determine who has rights in that particular mark.
While that’s a good start, it’s not entirely complete. And the reason being, is that the United States follows the first to use rule under trademark law. What that means is that the first entity to make a valid use in commerce of the particular mark is the one that has rights. This is because under common law, as opposed to statutory law, the first to use is the one that gets the rights to use it moving forward, even if they do not pursue a trademark registration. This doesn’t mean that one should avoid getting a trademark registered with the USPTO. But what it does mean is that if you determine that someone has applied for or registered a trademark with the USPTO, and you believe you were the first to use it, you may have actions that you can take to further establish your rights. You might be able to file what’s known as a cancellation proceeding in front of the TTAB or you may jump right to litigation.
Now, if we look at the first to file, which is in contrast to the first to use rule, the first to file is a rule followed by many countries outside of the United States. And what that means is that it is absolutely required that you file for trademark protection in order to have rights in those countries. That doesn’t mean, however, that just because you’ve used the mark there, you might not have other rights. The common example I give is that some countries have various laws that give the entity different rights depending on whether or not they used it or whether or not they filed. However, the safest course of action is to do both. And what I mean by that is as soon as you know you are going to have a mark that you’re using in connection with your business, it makes sense to file for trademark protection in the countries in which you plan to do business.
So, in the United States, for example, you can file either an intent to use trademark or an actual use in commerce trademark. An intent to use trademark allows you to gain protections before you’ve even used in the mark in commerce. Put another way, it allows you to establish priority rights so that if somebody else came along and used the mark within the window in which you filed, you could still claim priority rights. So, there are multiple benefits with pursuing a trademark registration in the United States, even though it is a first to use jurisdiction.
Most of these questions come down to specifics related to each country. However, you would be well served speaking with a United States Trademark Attorney in order to get the answers you need here within the United States. So, once again, my best advice would be that if you plan on using a mark in the United States, go ahead and file for trademark registration with the USPTO as well. Even though it’s not a first to file jurisdiction, it will give you the super benefits that go along with the trademark registration while also preserving that first use in commerce that you make, so as to have the strongest and most superior trademark rights.
So, once again, this has been Brian Hall looking at the issue of first to file versus first to use under trademark law.
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