Is a trademark owner the first person to register the trademark?

Is a trademark owner the first person to register the trademark?

Trademark law in the Untied States is a combination of federal law, state law and common law principles.  The purpose of trademark law is to protect consumers from inferior quality products.  The user of a trademark is granted certain exclusive rights to brand products with a trademark so that consumers will not be confused about the identity of the producer of a product.  Registration of a trademark in the United States will grant the person who registers the trademark some additional rights but registration is not required to start using a trademark to brand products.  If someone other than the owner of a trademark brands products in a way which confuses consumers, that can be considered trademark infringement.  The trademark owner can file a lawsuit to get an injunction to stop trademark infringement and to get monetary damage for trademark infringement which has already occurred.

To register a trademark in the United States, a trademark owner must demonstrate that they are currently using the trademark in commerce or they have an intent to use the trademark.  The trademark application process is not complete until the trademark applicant demonstrates that they are using the trademark in commerce by filing a Statement of Use.  A trademark applicant can extend the time limit for filing a Statement of Use for up to 36 months if they can so a good cause for not using the trademark.  If a statement of use is not filed than the United States Patent and Trademark Office will consider the trademark abandoned.

A point of confusion for some people is that registration of a trademark does not guarantee that the owner of the registration owns the trademark.  If another party can demonstrate that they were using the trademark before the registrant then that party would not be liable for trademark infringement in some circumstances.

The general rule for trademark ownership in the United States is that ownership of a trademark goes to the first-to-use, not the first-to-file.  While registering a trademark grants the registrant significant benefits, trademark priority is more important than trademark registration.  The party that uses a trademark in commerce first is called the senior user and has priority over later users, even if later users register the trademark.

The justification for this rule is that trademarks are intended to let consumers identify who produced a product, if consumers have not seen a trademark before than the trademark cannot serve its purpose.

Establishing priority to a trademark is extremely simple, the trademark just needs to be used in commerce before anyone else does.  Using the trademark means the trademark is used in regular business operations.  If the use of the trademark is sporadic or inconsistent then that does not satisfy the usage requirement. In commerce means that product packages are branded with the trademark or that business documents associated with sales feature the trademark.  Simply claiming the trademark is not enough to satisfy the in commerce requirement.

Trademark priority can be tricky to understand at first, but it is a relatively easy requirement to satisfy.  If you have questions about trademark priority or using your trademark in commerce it is best to discuss your concerns with an attorney familiar with trademark law.

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