Trademark Law: first to use v. first to file

AngelGray Small

By: Tyler Hampy


In the United States, it is not registration, but actual use of a designation as a mark that creates rights and priority over others. Thus, the rule is that ownership of a mark goes to the first-to-use, not the first-to-file.shutterstock_81193486-520x345[1]

That being said, trademark ownership is not acquired by federal or state registration, although registration is absolutely beneficial. Ownership rights flow from prior use, either actual or constructive. As the Federal Circuit observed: “[t]he requirements of both adoption and use devolve from the common law; trademark rights in the United States are acquired by such adoption and use, not by registration.” Therefore, even if you had a trademark registration and it was later cancelled, the underlying common law rights in a mark continue.

To acquire ownership of a trademark, it is not enough to have invented the mark first or even to have registered it first; the party claiming ownership must have been the first to actually use the mark in commerce. Therefore, a party pursuing a trademark claim must meet a threshold “use in commerce” requirement.

The term “use in commerce” means the bona fide use of a mark in the ordinary course of trade. The use must be more than merely to reserve a right in a mark. Trademark protection is granted only to marks that are used to identify and to distinguish goods or services in commerce, which typically occurs when a mark is used in conjunction with the actual sale of goods or services.

This is necessary because the purpose of a trademark is to help consumers identify the source. A mark cannot serve as a source identifying function if the public has never seen the mark. As such, a mark is not worthy
of protection until it is used in public in a manner that creates an association among consumers between the mark and its source.

Two elements must be satisfied in order to meet the “use in commerce” requirement. In short, a mark is deemed to be in use in commerce when it is used or displayed in the sale or advertising of the good/service and the good/service must be rendered in commerce. However, mere advertising alone may not establish priority of use. Both elements are required, and both elements must be distinctly analyzed.

In determining whether the two prongs of the “use in commerce” test have been satisfied, courts consider when the mark was adopted, use in a way to identify or distinguish the marked good/service in an appropriate segment of the public mind, whether the mark was actually used in the sale of goods or services, the relevance of non-sales activity, and other similar factors which might distinguish whether a good/service has actually been rendered in commerce.

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Posted On
Jan 27, 2014
Posted By

Does first in use in commerce have to be done legally? In other words, done in a matter that satisfies that states business/commerce laws(like obtaining a business license and trade name application prior to doing business or making sales). Or, can a person just do sales under a name, without obtaining a business license or without going through the process required by the state to do so, and claim first in use rights to that trade name?

Thank you

Posted On
Feb 13, 2014
Posted By
Mark Malek

In short, you just have to use the name in interstate commerce in a manner that associates its use with the goods and services. A good way to do that is to offer associate your goods and services with the mark and offer them on a website. Feel free to contact us if you want to chat further about this.

Posted On
Feb 14, 2014
Posted By

I am working on a startup website the .com domain was registered 10 years ago and never used or even had a page uploaded with under construction

Two years ago I was granted trademark protection and I am offering import services and advice now on many plate forms , so I own the right and my logo has the r symbol and I’ve used ™ mark as well, the earlier register has never used the domain or twitter account I’m stuck using other plate forms even though I registered the name last do I have any rights as they have never offered a service or published with my trademark do I have any right

The party lives in my state too, can you file a letter of demand to hand other these site, do I have a legal leg to stand on

Posted On
Mar 03, 2014
Posted By
Mark Malek

Paul – You can send them a demand letter, but standing alone, it probably will not do anything. Please contact us directly for some more trademark information. Our office number is 321-255-2332. Maybe we can give you some guidance on your particular situation.

Posted On
May 05, 2015
Posted By

Six years ago we started an educational non-profit web series called “Kick Cancer in the Can with Diane”. “Can” being a metaphor for Rear End / Butt. It seems a few months before a woman with many products and services under many names had an intention of selling a booklet called “Kick Cancer in the Can” “Can” being a metaphor for Garbage can” Since we weren’t selling only educating we felt it wasn’t commerce.

We registered with WGA & PGA

A year after we shot over 40 webisodes she started posting selfie vids and copied our logo.
We let it go. about a year ago she applied for a trademark and then shut took us of Youtube and Facebook. All our t-shirts, wristbands, animation, newspaper articles, banners and celebrity interviews have our title being used. She watched us produce the series and grow recognition for over 5 years before applying for a trademark. The California mediation for the Arts has made numerous attempts to communicate. Any ideas for a “no Budget” solution? Thanks, Diane and the team.

Here is our story we were forced to upload to our followers :

Posted On
Jun 16, 2016
Posted By
Darrell E. Hines

I produced a stage play called, Darrell E. Hines Church Hurt, the stage play, which have been a registered trademark since last year of March. 2015. A guy that produced the stage play, Church Hurts, sent me a letter to desist of use of that name. He just filed last month of the name. I don’t even know the guy or his work. Who’s really at fault here? Thanks.

Posted On
Jul 18, 2016
Posted By
Mark Malek

I wouldn’t say that Anyone is at fault, but if the facts above are as you say they are, then I believe you will be considered the senior user. Please contact our office directly to discuss further.

Posted On
Dec 26, 2016
Posted By

Hello, we have just started to commercialize our made in italy clothes in NY. The shop is not ours and the brand is already registered in italy since last june 2016. Is it enough in order to be protected in the USA according to the first to use legislation?

Many thanks

Kind regards


Posted On
Jan 22, 2017
Posted By
William Hall

Last year (July 2016), I changed the name of a product I am developing (in the process of manufacturing). At the time I decided (changed the name because we changed the focus of the product) to change the name, I did a search to see if anyone was operating services or goods under that name. Nothing came up in the search engines and the USPTO website. I looked up the .com and it was a company (unrelated industry) up that wasn’t really selling anything but was more so informational and the site didn’t look very developed or cared for.

Not thinking to contact the company to acquire about the their interest in keeping the site, I filed for the trademark and moved forward in working with my manufacturer to develop the product and packaging, baring this name.

Here we are in January 2017 and we have the product development finished and ready to start production. I get an email this week from a owner of a sizable company in my industry, stating that he has been selling a product under the name for 3 years (noting to say, more aggressively over the past year). I’m guessing the guy found me by running across my application in the USPTO while filing his application in December of 2016. I filed my application in August 2016. In the email, he goes on to say that he wanted to reach out to me to see my intentions in pursuing the application and before he puts in a form that will put a stop on my application.

As I mentioned, when I thought to change the name (July 2016) of my product, I did a search and nothing came up under this name. In his email, he included the .com address and I could see he has the .com for the name now (he took it out July 20th 2016 when I researched).

I’m being told different things from different trademark attorneys. I’m being told if he has sold anything under this name than he has priority. Another tells me, he has to prove sells and regions. Another says, he has to show he’s been really pushing it out in commerce.

Even now, I look online extensively and can’t find this guy’s product anywhere than on his .com and on his (ones he owns) related sites. It’s not mentioned on any blog or anywhere else like no one even knows the product exist. I find this really strange that you claim to be in sells under this name for 3 years and you’re nowhere online (aside from his own sites). Even if it was really only for the past “year”, I would think I could find something on his product. After extensive research, the earliest mentioning I was able to find (his site mentioning it) for the product is July of 2016.

The trademark name is sort of self exclamatory so we have similar competing products though the designs are different, they are used for some of the same purposes and industry.

I’m trying to figure if pursuing the application and rights is worth it in this case or should I cut my losses in designs and molds and start another name. We have not started production yet but are ready if we can keep the name.

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