Someone Registered Your Trademark First! Now What? (Part 2: They Used It First)

So, you did a Knock-Out Search and found a trademark that’s similar to yours. Last time, I told you to check two things.

First, if the Goods & services section of the registration listed the same International Class that your products or services are in.

Second, if the products or services in that section are in the same industry as your products or services.

If they are, the next thing you should check is the date listed in the First Use section.

If that date is earlier than the date you started using your trademark, this article likely addresses your situation better than Parts 3 or 4.

An Unfortunate Position

Unlike most other countries, trademark rights in the United States usually go to the business that used the trademark first, not the one that registered it first.

So, even if someone else registers first, the earlier user may still have stronger rights.

If someone else has already registered a similar trademark and they sell similar products or services or they’re in the same International Class or industry as you, the greatest point of leverage you could have is to be the first person to use the trademark.

But in this scenario, the other business used the trademark first.

What is a Section 2(d) Refusal - Likelihood of Confusion?

You might be thinking, “Well, they’re not identical. My trademark is spelled differently, uses a word like ‘LLC’ or ‘Co.’, or is an image and theirs is a word.”

And while that might be true, unfortunately, that probably won’t be enough.

When the USPTO (the United States Patent & Trademark Office) evaluates trademark applications, one of the main things they are looking for is similarity to already registered trademarks.

If it finds one that is too similar, you will receive what’s called a Section 2(d) refusal for Likelihood of Confusion.

The trademarks do not need to be identical for there to be Likelihood of Confusion.

They simply need to be similar enough in how they look, sound, mean, or feel to confuse people into thinking the same business is behind both.

Technically, there’s a 13-point analysis that must be done when evaluating if there’s a Likelihood of Confusion. They are commonly called DuPont Factors, after the court case that first listed them out.

However, the two most important factors are similarity of the marks and similarity of the products and services.

And in this scenario, both factors work against you.

Rebranding Might Be the Least Expensive Option

The unfortunate reality is that the safest option may be to rebrand.

Since the owner of the registered trademark was using it before you, you don’t really have any leverage against them.

Also, since you both sell similar products or services and they have a registered trademark, there’s a real chance you could get sued for trademark infringement.

You might not want to pay for a rebrand, but a rebrand is cheaper than trademark infringement litigation.

And that’s because you’ll have to pay for a rebrand anyway if you lose or settle the case.

Co-Existence Agreements: Another Option

Another possibility is a co-existence agreement. A co-existence agreement is a contract between you and the other user of the trademark that explains how each party is allowed to use the trademark.

The co-existence agreement should contain more than a statement from the first trademark user saying they consent to the registration of the later trademark user.

It should also explain what happens if customers get confused in the future.

The USPTO may consider a co-existence agreement when reviewing your response to a Likelihood of Confusion refusal.

But even if both businesses agree, the USPTO can still say no.

What Comes Next?

This wraps up Scenario 1, which is when the registered trademark’s products and services are similar or in the same industry as you, and the other business started using the trademark before you.

Next up is Scenario 2, which is when the registered trademark’s products and services are similar or in the same industry as you, but the other business started using the trademark after you.

 Key Takeaways

1. If a similar trademark has already been registered for similar products or services, the First Use date is critically important.

2. In the U.S., the business that used a trademark first usually has stronger rights than the business that registered it first.

3. If the other business has registered the trademark and used it first, consider rebranding because it’s cheaper than a lawsuit.

4. A co-existence agreement may help, but doesn’t guarantee that your trademark will be registered.