TM Research and the Nuances of Trademark First Use
October 5, 2023
Published by: Trademark Prospector

The concept of first use is a common law concept. First to use a trademark in a certain line of trade has priority, and that’s that.

After common law already developed in each US state, the US codified federal trademark laws, creating a federal US trademark registry which is maintained by the USPTO, but it too codified some of the common law concept of first use.

Under the federal law, generally, the first person to file gets to register the trademark (if no one else contests during the notice period). But registration may be short-lived. Under federal law, during at least the first five years of your registration, someone who utilized your trademark first in your line of trade can initiate a cancellation proceeding, and potentially make you lose the trademark to them. Also, you can be separately sued under state common law for using the trademark by the person who claims to have used it first.

Therefore, trademark research needs to encompass more than just whether or not the trademark you want to register is already federally filed. You need to see who else may have used your trademark first, and weigh the likelihood of whether this user will notice your filing, and cause you trouble.

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