Here in the United States and in many other countries around the world, ownership rights for trademarks are given on a “first to use” rather than a “first to file” basis. But what does that actually mean and how do you determine if you are indeed the party that has exclusive “first to use” rights over a trademark in question?
First to Use vs. First to File
The “First to Use” concept is derived from common law, where trademark rights were established by adoption and use of a mark, rather than registration. That means under our laws, a person or company is granted exclusive trademark rights for their original mark the moment they begin using the mark to identify their goods or services in the marketplace. Even if the mark is unregistered, the first user of the mark will still be able to claim priority ownership rights if someone else tries to register an identical or similar mark with the federal government. Contrast this to countries that use a “First to File” system like China, where the first person to file an application for a mark is given priority for rights, regardless of who created the mark or used it first in commerce.
What Constitutes First Use in Commerce?
It’s not enough, however, to prove that you developed a trademark before anyone else. In order to have “first use” rights, a person or brand will need to prove that they were the first to use the mark “in commerce” related to the goods or services they offer.
When it comes to goods, a trademark is said to be used in commerce when it is displayed on the goods in question and subsequently sold or shipped in commerce. It is a common misconception that once a good is created and the mark is placed on the product or advertising that it is enough to establish “use in commerce.” However, the product must actually be sold and transported at least once to establish use.
For services, establishing first use requires that the mark be used in the sale or advertising of the service and that the service is ultimately rendered. For example, signing an agreement for services is not enough to establish use; instead, ownership rights won’t be established until the service is ultimately performed for the person who signed the contract.
How Do I Know If I’m Really the First to Use a Mark in Commerce?
Answering this question can be tricky, as first to use rights are not as clear cut as they seem. Although For example, “Company A” may file an Intent to Use application for a trademark with the United States Patent and Trademark Office, and even though they have not yet used the mark in commerce, their application will likely still prevail over Company B, who actually started using the same unregistered mark in commerce after the application was filed. Even if you believe that you have priority common law rights to a trademark, it’s important to consult with an attorney who can help you conduct all necessary searches to ensure this is the case.
When to Get Help
If you need assistance determining the date that your trademark was first used in commerce, or if you wish to take the next step to federally register your trademark to strengthen your rights and gain the ability to defend your mark against infringement in the federal court, we invite you to contact our trademark attorneys at 888-666-0062 to schedule an appointment.
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.