First-To-File Trademarks

In the United States, the right to use a trademark is based on the rights of the first party to use a mark. Under common law rights this means that if a restaurant opens on one end of the block, another restaurant can’t open at the other end and call itself the same name. Allowing that would cause confusion and potentially harm consumers who would have difficulty knowing which restaurant is which. The same holds true for trademarks that are registered. The right to use and exclude others is based not on who is first-to-file, but on who uses it first.

In First-to-File jurisdictions its a race to the trademark office to protect your trademarks.
Racing to register a trademark.


This is not the way it is in every country, in fact in most countries a person can lose the right to use a mark in that country merely because they did not register it before someone else – even if they were using it in that country before the party registering the mark. This process sometimes results in a race to the trademark office. This includes a number of countries with high instances of trademark abuse such as in China and Russia, as well less risky locations like the EU and Britain (Britain’s trademarks are in the process of being “cloned” from the EU as part of Brexit).

So Why Is This Important?

Simply put, if your business currently does business in a first-to-file country, including manufacturing, you may be at risk of someone filing an application in that country that will block you from using your mark there in the future. While there are a variety of reasons this is done, none of them are good if it happens to you.

If you believe this is important to you, you may want to consider applying for trademarks in these countries to avoid potential problems down the line. There are two main ways to register in most countries: 1) a special application can be filed in the US which in turn serves as the basis for a number of foreign registrations (Madrid Application), or 2) separate applications may be filed directly in each country you wish to register in. Each of these techniques has its advantages and drawbacks and what is right in one country may be problematic in the next.

For questions on the process, please feel free to contact the firm at 612-414-3113.