Law Office of Jason H. Rosenblum, PLLC

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The Trademark Race: What Happens When Someone Beats You to the Punch?

In the fast-paced world of business, securing a trademark for your brand, logo or slogan can feel like a race against time. You’ve got a brilliant brand name, logo, or slogan, and you’re ready to make your mark on the market. But what happens when someone else files a trademark application for a similar mark before you do? Welcome to the trademark race, where timing can be everything.

Understanding Trademark Priority

In the United States, trademark rights are generally granted on a “first-to-use” basis rather than a “first-to-file” basis. This means that the first party to use a trademark in commerce typically has superior rights over others who may file for registration later. However, filing for a trademark with the United States Patent and Trademark Office (USPTO) provides significant advantages, including a presumption of ownership, constructive use over all of the US, and the exclusive right to use the mark nationwide.

Scenario: Someone Filed Before You

Imagine this: you’ve been using your brand name locally for a few months, but you haven’t filed a trademark application yet. Suddenly, you discover that another company, perhaps in a different state, has filed an application for a similar mark. What does this mean for your brand?

1. Conduct a Thorough Search

The first step is to conduct a comprehensive trademark search to understand the scope of the other party’s application and use. This search should include the USPTO database, state trademark databases, and common law sources. Understanding the specifics of the other party’s application, including the goods and services covered, can help you assess the potential impact on your brand.

2. Assess Your Prior Use

If you have been using your trademark in commerce before the other party’s filing date, you may have prior rights to the mark. Document your use of the mark, including dates, geographic areas, and the nature of your use. This evidence will be crucial if you need to assert your prior rights.

3.  File a Letter of Protest

If you believe that the other party’s trademark application conflicts with your prior registration or there are other grounds to challenge the application, consider filing a letter of protest with the USPTO. A letter of protest allows you to provide evidence that the other party’s mark should not be registered. Common reasons for filing a letter of protest include:

  • The trademark in the protested application is likely to be confused with another registered trademark.
  • The trademark in the protested application is merely descriptive or generic.
  • The trademark suggests a false connection with you or another party.
  • The trademark is a widely used or commonplace message and does not function as a trademark.

Ensure that your letter of protest includes specific, relevant legal grounds and supporting evidence, as outlined in the Trademark Manual of Examining Procedure (TMEP) section 1715.01.

4. Consider Filing an Opposition or Cancellation

If the other party’s application has been published for opposition, you have a window of opportunity to file an opposition with the USPTO. This legal challenge allows you to argue that the other party’s mark should not be registered due to your prior use and the likelihood of confusion. If the mark has already been registered, you can file a petition to cancel the registration.

5. Explore Coexistence Agreements

In some cases, both parties may be able to coexist peacefully by entering into a coexistence agreement. This agreement outlines the terms under which both parties can use their respective marks without causing confusion. For example, you might agree to use the mark in different geographic regions or for different types of goods and services.

Seek Legal Assistance

Navigating the complexities of trademark law can be challenging, especially when dealing with potential conflicts. It’s essential to seek the assistance of an experienced trademark attorney who can help you assess your options, gather evidence, and represent your interests in any legal proceedings.


The trademark race can be intense, but understanding your rights and options can help you navigate the challenges. Whether you’re the first to file or the first to use, taking proactive steps to protect your brand is crucial. Remember, in the world of trademarks, timing is important, but strategy and legal expertise are equally vital.

If you find yourself in a trademark race or need assistance with any trademark-related issues, don’t hesitate to reach out to our team of experienced trademark attorneys. We’re here to help you secure and protect your brand, so you can focus on what you do best – growing your business.

If you need assistance, we invite you to contact our law firm today at (888) 666-0062 or click here to schedule your Initial Discovery and Strategy Session online. We can help you understand your options, develop a strategic plan, and ensure your intellectual property is protected.

Disclaimer: The information contained in this article is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney.