Use or file trademark first?
You do not have to apply for a trademark prior to using it. In most cases, trademark rights in the US are granted to the first one who uses a mark in commerce on particular goods or services. US trademark law recognizes the first user. Before you breathe a sigh of relief, however, it is the first filer who truly gets all the advantages. If it’s not too late, try to file your trademark first. Let’s discuss why.
USPTO Favors the First Trademark Filer
Trademark applications are examined by the USPTO in the order received. Known as USPTO examining attorneys, trademark examiners do not give any special treatment to applicants who claim an earlier date of first use compared to other applicants. Whoever files their trademark first gets their application examined before subsequently filed applications.
Any disputes over first use, also known as trademark priority, will need to be resolved in a TTAB trademark opposition or cancellation.
Why are you not filing Intent-To-Use trademark applications?
This is one of the strongest reasons why trademark owners should consider filing Intent-To-Use applications. Not only will your ITU application be examined before subsequent applications, your ITU filing date will act as your “constructive date of first use.” This means that the law will treat you as if you began using your mark on your ITU filing date even though you actually began using the mark later. This special advantage applies only if and when an ITU application matures into a registratin.
If you’re not trying to stay under the radar, then the potential benefits of filing a trademark application outweigh the benefits and risks of not applying, provided you have a competent trademark registrability search conducted before you file.
If you’re concerned about building and protecting a brand in the long-term, why limit your business to merely unregistered common law rights? It will cost you much more time and money to defend a trademark infringement lawsuit by proving you had priority (earlier) of use of your common law trademark than if you had simply registered your mark.