Are US trademark rights based on first to use or file?

Many foreign countries use a first-to-file system for trademark registration and protection. 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 or renew a registration. The US is different. Trademark rights in the US are generally based on first use 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 trademark protection goes to the one who was first to use, not the first to file. That being said, why does filing first matter?

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 in commerce 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 additional 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 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 to use or file a trademark?

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 filer and first user of a trademark?

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.

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Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys work as a team to equip startups and founders with solid IP rights that facilitate funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com