Trademarks are first to use not first to file
Written By Adam Yohanan
Most people assume trademarks work like patents: whoever files first wins. But that’s not how U.S. trademark law works.
In the U.S., priority of trademark rights is based on first use in commerce, not first to file. That means if you’re already using a brand name, logo, or slogan in connection with selling goods or services, you may have legal rights, even if someone else later files an application with the USPTO.
First to Use Advantages
Brands that are first to use retain two key advantages:
Priority: If two businesses claim the same name, the one that can prove earlier use in commerce usually wins, even if the other filed first.
Limited Enforcement Rights: Even without registration, you can gain enforceable rights in your geographic market just by using your mark.
Registration Advantages
However, registering a trademark still creates powerful rights that are not enjoyed by brands that are in use but haven’t been filed with the USPTO such as:
National Protection: Expands your enforcement rights nationwide and beyond your geographic market.
Presumption of Ownership: The court presumes you have the exclusive right to use the mark. Without registration, you have to prove all of that from scratch.
Enhanced Remedies: Statutory damages, treble (triple) damages, and attorney’s fees in cases of willful infringement.
Access to Federal Courts: Sue in federal court directly under the Lanham Act, which is preferred over unfair competition claims brought in state court.
Customs Protection: You can record your registration with U.S. Customs to block counterfeit goods at the border.
Notice of Registration
Registration also puts the world on notice that you are claiming ownership of your mark. As a result, if nobody objects to your ownership after you register the mark, your ownership is presumed. However, you can also put the world on notice without registration by using the “TM” logo next to your brand. It’s a public way of saying “we consider this our brand.”
Once the mark is federally registered, you can upgrade to the ® symbol, which carries real legal weight because it signals a registration with the USPTO. Using ® without a registration is unlawful, but anyone can use ™ to put the world on notice of their claim.
Pro Tip: If you don’t have the capital to fund a full registration process, don’t fret. By using the name of your brand in commerce, especially with the ™ logo, you still have trademark rights. However, if you don’t have the capital to fund a diligence process to confirm you are not infringing on someone else’s existing trademark, tread carefully. If you are not the first company to use the mark, you won’t have any rights to your brand, and you might get sued yourself.
Adam Yohanan is a transactional business lawyer with extensive experience representing companies, investors, and entrepreneurs in a wide range of high stakes business transactions.
Adam handles the small and large transactions in the life of a businesses, including mergers & acquisitions, entity formations, partnerships and joint ventures, investing and fundraising, commercial contracts, and dissolutions. His office can be reached at 212-859-5041.
