Why does the First to File get the Protection?

Why does the First to File get the Protection?

  • 16 July, 2018
  • Nyall Engfield

Why does the First to File get Trademark Protection?

Once an application or a registration is in the Trademark Registry, the trademark is used to bar other, subsequent applications from registration in the USPTO. This means that, once filed, your trademark gains the benefit of that earlier filing date to "overcome" other, later trademarks that attempt to register.

US First to File Trademark System

The United States primarily follows a "first-to-use" trademark system, where the first party to use a trademark in commerce generally has priority over others who may later attempt to use or register the same or a confusingly similar mark. However, the U.S. system also incorporates some "first-to-file" elements that provide certain benefits to trademark applicants:

  1. Constructive use priority: Under Section 7(c) of the Lanham Act, filing a trademark application with the USPTO constitutes "constructive use" of the mark nationwide, conferring a priority date equivalent to the filing date. This means that if an applicant files an application before another party begins using the same mark, the applicant can claim priority over the later user, even if the applicant has not yet used the mark in commerce
  2. Intent-to-use applications: Applicants can file based on a bona fide intent to use the mark in commerce under Section 1(b) of the Lanham Act. This allows applicants to establish a priority date before actual use, as long as they eventually use the mark in commerce within the prescribed timeframe
  3. Nationwide priority: Registering a trademark provides nationwide priority and protection, even in areas where the mark has not yet been used. In contrast, unregistered "common law" rights based on use alone are generally limited to the geographic areas where the mark has been used

However, these "first-to-file" benefits are subject to certain limitations:

  1. Prior users' rights: A party who used the mark in commerce before the applicant's filing date may still have priority in the specific geographic areas where they used the mark
  2. Actual use requirement: To obtain and maintain a registration, the applicant must still use the mark in commerce within the prescribed timeframes


So while the U.S. is primarily a "first-to-use" country, filing an application early can provide important benefits and nationwide priority, subject to the rights of prior users in their geographic areas of use. This hybrid approach aims to balance the interests of early adopters and trademark applicants.

A trademark application can be challenged if a subsequent filer started using the mark previously. However, that is a big process and would take place during opposition, not through Examination. Oftentimes, we have seen applications pass through the system to allowance, even though a previous, common-law use existed. In that case, the earlier user cannot be prevented from using the trademark, but they can be prevented from expanding their use geographically, for example. 

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