First to Use or First to File?

We are a “first to use” jurisdiction for trademarks in the United States. That means, if you are the first to use a trademark in multi-state commerce you have “priority” over those who use the same trademark after you, and are the rightful owner of the mark.

However, we also have a trademark filing system and federal database of trademarks maintained by the United States Patent and Trademark Office. Well….what if someone files an application for your trademark even though you used it first? (In other words, what if someone else gets your trademark in the database before you get a chance to?)

Because you were the first to use the trademark, you have “priority” and are the rightful owner of the mark, but because the other guy got into the USPTO database before you did, you will be blocked from filing a federal trademark application for your trademark. As an administrative body, the USPTO does not make a determination as to “priority” when someone makes a trademark application. Rather, they adopt a “First in” mentality, and regardless of the priority date claimed in the competing applications, if someone else is in the database before you, its a problem.

Therefore, in order to successfully register your [priority] mark, you must either A) convince the owner of the offending trademark to relinquish it (i.e. get out of the way so your mark can be registered); or B) file a Cancellation action with the USPTO, prove you used the trademark first in a proceeding that is fashioned like a lawsuit, and force the offending trademark to be removed from the database clearing the way for your application.

So, does it pay to register your trademark as soon as possible? Yes! Obviously, as much fun as it is for the lawyers to file cancellation actions, its much easier if that entire exercise can be avoided in the first place. That said, all hope is not lost – if you were actually the “first to use” the trademark, it can be yours, but with a few extra steps!

tl;dr – The US is a first to use [trademark] jurisdiction with a first to file system bolted on to it.

Thanks for reading.