Trademarks: Doesn’t the first party to register trump all other users?

Glenn W. Peterson

Imagine that you had the good fortune as an insightful and hard-working business entrepreneur to link the product or service you provide to the public with a mark that is instantly identifiable to the great majority of consumers.

That is, your mark — your company’s central identifying icon, symbol or, perhaps, catchy expression — is a highly effective device for conjuring up instant association in the public’s mind with your goods and services.

How valuable is that?

Quick answer to that question: Just ask the business principals at a company like Nike or McDonalds.

Now imagine that a business rival in your area begins using an identical or closely similar mark to sell goods that directly compete with yours. You panic because you never formally registered your trademark and have found out that your competitor did take the requisite steps to register.

Does your rival now have superior rights to that mark?

That is a fundamental query and concern under American trademark law and confusing to many people.

Many mark owners might find the answer reassuring. As we note on a relevant page of our website at Millstone, Peterson & Watts, LLP, “not everyone knows that even unregistered marks are protectable.”

In fact, and as pointed out in an online primer of trademark law, “protections are granted as soon as a trademark is used in commerce.”

In the real world, that means your first use in commerce grants you a common-law right to the mark that can be exceedingly valuable in any dispute involving a business competitor that has filed for trademark registration.

It is important to note, though, that registering a mark has distinct benefits for a mark that is already being used commercially.

Any business owner with questions or concerns regarding trademark registration, protection or infringement can contact a proven intellectual property law firm for answers and advice.