Someone Registered Your Trademark First! Now What? (Part 3: You 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 goods or services.

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

If that date is later than the date you started using your trademark, this article likely addresses your situation better than Parts 2 or 4.

First-to-Use: a Point of Leverage

The good news is you might have leverage. In the United States, trademark rights usually come from using the trademark first, not registering it first.

So, if you used the name before the registrant, their registration might not wipe out your rights.

This is where your leverage, if you have it, comes from.

Since you are the first to use the trademark, you may still have stronger rights than the person who registered after you.

Your Options

The bad news is that because the other user filed before you, exercising your rights will cost time and money.

If you try to file your application, you will likely receive a refusal because of the registered trademark. There are two ways to try to get around this.

The first is a co-existence agreement with the registered trademark owner.

The second is a cancellation proceeding before the Trademark Trial and Appeal Board (“TTAB”).

Co-Existence Agreements

 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 agreement should set rules about where each business can operate, what products or services each business can sell, and how both sides will avoid confusing customers.

You might be wondering why the other trademark user would agree to a co-existence agreement. Well, if you really were the first user, you probably have stronger rights than they do.

If you have strong proof that you used the trademark first, the other business may see a reason to negotiate instead of risking a challenge to its registration.

Cancellation Proceedings

The second way to move forward despite the other user of the trademark is a cancellation proceeding.

This is a legal proceeding where you ask TTAB to cancel the existing trademark registration.

This can be expensive, time-consuming, and evidence-heavy, so it probably shouldn’t be your first choice.

Incontestable Trademarks: Actually, You Don’t Have Leverage

One important warning: if the other registration is old enough, your options may be more limited.

Some registrations become “incontestable” after five years if the owner files the right paperwork.

If the other registration is incontestable, prior use alone won’t be enough to cancel it.

In that situation, a co-existence agreement or rebrand may be more realistic.

What Comes Next?

That wraps up Scenario 2, which is when the registered trademark’s goods and services are similar or in the same industry as you, and the business started using the trademark after you.

Next up is Scenario 3, which is when the registered trademark’s goods and services are very different from your goods and services.

Key Takeaways

1. If you used the trademark first, you may still have leverage even if someone else registered before you, but it won’t be cheap.

2. A co-existence agreement may let both businesses use the simliar trademarks by setting rules to avoid customer confusion.

3. Because you used the trademark first, you might be able to cancel the trademark registration.

4. If the trademark registration has become incontestable, being the first user won’t be enough to cancel the registration.