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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