Why does an early trademark filing date matter?
US trademark law generally regards the first trademark user, and not the filer, as the rightful owner. This distinction makes the US different from many foreign countries which provide the first filer with trademark rights. So if earlier trademark use is the determining factor, why should a company file a trademark application earlier than others applying for similar marks? What difference does an early trademark filing date make?
An earlier trademark filing date can make a huge difference. When it comes to federal trademark applications filed with the USPTO, an earlier filing date carries substantial advantages in terms of cost, procedure and substantive rights. In other words, there is no good reason to wait to file if you have decided to move forward with a particular mark.
Cost savings of an earlier trademark filing date
You may save a ton of money by filing your trademark application before others. In general, the USPTO reviews trademark applications in the order they are received. If two applications for similar marks are filed by two different companies, the earlier-filed trademark application will be examined first. This prior-pending application will be reviewed without regard to the date of first use alleged in any later-filed applications. In other words, examining attorneys do not compare first use dates when reviewing trademark applications.
Even if a subsequently filed trademark application alleges an earlier first use date than yours, that earlier use date will not matter to the examining attorney. The burden will fall on subsequent applicants to oppose your trademark application. For companies lacking financial resources, such a trademark opposition might never occur. So an earlier filing date saves the cost of potentially defending an opposition.
On the flip side, consider the cost savings of not having to go on the offensive. If a competitor, or even an opportunist, were to apply for a similar mark even just a few days before your filing date, you would face the cost and burden of having to oppose their trademark application.
Advantages of applying before others
There are also substantive advantages of an earlier trademark filing date. As discussed here, the filing date of an ITU application becomes the constructive date of first use if the application matures into a registration. In other words, the law will treat an ITU filing date as if it was first date of use if an ITU mark is successfully registered. This is a very tangible and useful benefit for a trademark owner seeking to prevent others from using a similar mark.
What happens to later-filed trademark applications?
A later-filed application for a similar mark will typically be suspended pending the outcome of an earlier-filed application. The suspension may take several months or even a few years. For example, if the previously filed application was based on an Intent-To-Use, that applicant may take up to three years to file a Statement of Use assuming their application gets allowed (which could take 1-2 years if any refusals had to be overcome). So a major disadvantage of a later filing date is the delay in registration that could take years to resolve.
What are the risks of filing trademark applications later?
Again, it bears emphasis that trademark applications are examined by the Trademark Office generally in the order received. A later-filed application will, therefore, incur the following risks:
- suspension pending the outcome of an earlier-filed application for a similar mark
- delay in registration even if your alleged first use date is earlier than that of the prior-filed application
- costs of having to oppose prior-filed application
Vic Lin
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