“First to Use” v. “First to File” in Trademarks
Is Someone Using My Trademark?
If you’re running a business, the law is probably the last thing on your mind.
You’re busy using your trademarks (i.e. names, logos, and slogans) to build a brand you believe in.
You don’t want or need to get bogged down in avoidable legal battles.
But here’s a question for you, if two businesses are using the same name, logo, or slogan, who gets to keep it?
It’s an important question.
If you’re using a trademark and you don’t have the right to use it, you could end up fighting a legal battle that ends with you being forced to rebrand, destroy all your inventory, and forced to pay the other party’s legal fees.
However, the answer depends on what country you’re in.
What is Trademark Priority?
Rights to a trademark is determined by “priority.” There are two ways the priority is determined.
One is “First to File” the other is “First to Use.”
First to File
Most of the world, including Europe, China, and Canada, follows a “First to File” priority system.
As the name implies, in a “First to File” system, trademark priority is awarded to the first to file a trademark application.
It doesn’t matter how long you’ve been using the trademark. Whoever files first wins, period.
First to Use
The United States follows a “First to Use” priority system. In a “First to Use" system, your rights start the moment you start using the trademark in your business.
However, unless you register your trademark with the United States Patent & Trademark Office (the “USPTO”), your rights only cover the areas where you do business.
You can set a nationwide priority date by filing a successful trademark application with the USPTO.
Intent-to-Use
The United States also has an “Intent to Use” application within its priority system. With an Intent to Use application you file before you’ve started using the trademark.
Once you start using the trademark, priority is determined based on the date you filed the Intent to Use application.
This is great if you’ve started investing in branding but haven’t secure your trademark rights.
Key Takeaways
The right to stop others from using your trademark is called priority.
There are two main systems for determining who has priority: “First to File” and “First to Use.”
The “First to File” priority system is used in most of the world. It awards priority to whoever files a trademark application first. Use of the trademark in business is not required.
The “First to Use” priority system is used by the United States. It awards priority to whoever uses the trademark in business first. However, priority is limited to geographic areas where the trademark user does business. Nationwide priority is established by registering the trademark with the USPTO.