First trademark filer or user: Who gets trademark rights?

Do US trademark rights go to the first trademark filer or user?

Many foreign countries use a first-to-file system for trademark registration. Whoever registers a trademark first has rights regardless of whether they were first to use the mark. In fact, some countries do not require any use to register a trademark.

The US is different. Trademark rights generally belong not to the first trademark filer, but the first user. In the US, trademark rights generally go to one who was first to use the mark in commerce, meaning that whoever was first to use a mark on certain goods or services would be presumed the lawful owner of the trademark. There are exceptions, but the general rule is that rights belong to the one who was first to use a trademark, not the first to file.

That being said, does filing first even matter? Actually, it matters a great deal.

Need help protecting your trademarks? Call Vic at (949) 223-9623 or email vlin@icaplaw.com to find out what it would take to register your trademarks.

Why does filing a trademark application first matter?

Trademark applications are examined in the order they are received by the USPTO. Suppose Owner A files an application to register a mark first used in 2020. A day later, Owner B files an application to register a similar mark first used in 2019. Even though owner B has priority in terms of earlier use in commerce, owner A’s trademark application will be examined before owner B’s application. This is a huge advantage for owner A even though owner A has a later use date.

What happens to a later-filed trademark application with an earlier use date?

A later-filed trademark application will be suspended pending the outcome of an earlier-filed application for a similar mark. That means prosecution of the later-filed application will be put on hold until the earlier-filed application is registered or abandoned. Why is that a big deal? Well, it can take years to reach a final outcome of the earlier-filed application. Furthermore, the outcome of the earlier-filed application may require action by the applicant of the later-filed application.

Basically, a claim of priority of use is not relevant to an (ex-parte) examination of your trademark application. You cannot use an earlier date of use to argue for the registration of your later-filed application.

What costs could result from a later-filed trademark application?

If an earlier-filed application for a similar mark is preliminarily approved, the mark will be published for opposition. A publication of an approved trademark application will put the burden on the later applicant to file a trademark opposition with the TTAB.

When does being a first trademark user help in a trademark application?

Being the first to use a trademark matters when you have to oppose or cancel a trademark application. This 2-party dispute is known as an inter partes proceeding which would be filed with the TTAB.

Your date of first use will not matter when you are prosecuting a trademark application with the USPTO in an ex parte examination.

Is it better to be first trademark filer or first user?

If cost is your primary concern, then it’s better to be first to file a trademark application. Being the first filer has the advantage of having the trademark application examined without delay. Subsequent filers would have to wait through a suspension until the earlier application is resolved.

Why not be both first trademark filer and first user?

Ideally, you want to file and use your trademark before others. If your usage will be delayed by factors beyond your control, then consider filing an Intent-To-Use application first to get an earlier filing date. You can subsequently submit a Statement of Use shortly after you begin using the mark on the identified goods or services.

Be the first to file your trademark application

Email patent and trademark attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to see how we can protect your trademark and beat others to the Trademark Office.

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Frenda Williams
Frenda Williams
2023-02-21
I have had the pleasure of working with Vic and his team at Innovation Capital Law Group on Trademark creation and contracts. As a solo and non-tech founder, the assistance, guidance and recommendations from Vic and his team have been INVALUABLE. And, with the knowledge that I have a Solid, well versed and caring legal team I can turn to, I have the confidence I need to navigate the intricacies of the tech industry as a solo founder. With that being said, If you’re a startup and you’re looking for a legal team that speaks your language, knows the industry and makes you feel like family…. Innovation Capital Law Group is a Perfect fit for you, your company and your team. Five out of Five Stars… don’t let their brilliance blind you 😁
Shiwei Liu
Shiwei Liu
2023-02-20
Excellent service and quick response. Lots of informative documents on its website.
Chang Chien Michael
Chang Chien Michael
2023-02-20
I have worked with iCap for more than 7 years. I am very glad with his professional knowledge that 7 utility patents were granted by USPTO. Vic and his team are very efficient and knowledgeable. Every time he can transcribe my design idea perfectly in two weeks and file it with no rejection from USPTO. The other service including the granted patent following up is always in time to remind me to take actions. That is why I still stick on iCap as my first priority when I want to file a US patent.
Mats Johansson
Mats Johansson
2023-02-20
We have been happy client for 10+ years. Awesome Patent Law Firm!
Hanson Chang
Hanson Chang
2023-02-16
Glad to write a review for Innovation Capital Law Group. We previously worked with a big law firm (2200 employees) on our patents, and decided to shift over to Innovation Capital. It was a great decision, this team got our patents done faster, more effectively, at a lower cost, and with broader claims. Win all around
Genevieve Springer
Genevieve Springer
2022-09-09
Clear, discernible tools and strategies couched within a business conceived from a genuine interest in doing right by founders.
InPlay Inc
InPlay Inc
2022-06-30
Vic and his team have been providing us with the best patent application experiences we could ever have in our entire career life! Their professionalism and technical knowledge have really saved us a lot of communication effort and time on the applications. Definitely highly recommend if anyone is looking for help with IP protection for their business.
Meg Crowley
Meg Crowley
2022-03-05
After working with Vic and his team at Innovation Capital Law Group, our organization is confident our trademarks were solid and protected. Thank you team.
Andy Dong
Andy Dong
2022-02-28
I have been using Innovation Capital Law Group for a few years and continue to use them. They have provided an excellent services on our legal issues including intellectual properties and patents . They are very responsive, easy to work with and very competent . I highly recommend them.

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