First to use, first to file: how US trademark rights begin

Many trademark systems are first-to-file: the first to apply for registration generally gets the right. The United States is different. US trademark rights come from use of the mark in trade. Registration confirms and extends those rights, but it does not create them by itself. This guide explains the US approach in plain terms for businesses and counsel trained in first-to-file systems.

Rights from use

A business that sells goods under a mark in the United States acquires rights in that mark even without registering it. These common-law rights are generally limited to the area where the mark is used and known. They are enforceable in court under the Lanham Act's unfair competition provision (15 U.S.C. §1125(a)) and under state law. An earlier user with no registration can oppose your application, petition to cancel your registration, or, in its own area, continue using the mark.

For US purposes, "use in commerce" has a specific meaning (15 U.S.C. §1127). For goods, the mark must be placed on the goods, their containers or labels, or displays associated with them, and the goods must be sold or transported in commerce. For services, the mark must be used or displayed in selling or advertising services that are actually rendered in commerce. Advertising goods that cannot yet be bought is not use.

What registration adds

A registration on the Principal Register gives the owner nationwide constructive use. Once registered, the mark is treated as if it had been used throughout the United States from the application's filing date (15 U.S.C. §1057(c)). The exception is anyone who used the mark, or filed for it, earlier. In practice, the filing date works much like a priority date in a first-to-file system, as long as the application matures to registration. Registration also gives public notice, the right to use the ® symbol, and a basis for recording with US Customs.

Four ways to get a US filing date

1. Use, §1(a): if you already sell in the United States.
2. Intent to use, §1(b): if you have a bona fide intention to use the mark in US commerce. That means a real, documented plan, not a wish to reserve the name. You must prove use before registration. Oppositions are sustained when an applicant cannot show that intent. A recent precedential Board decision on this point, between two Mexican companies, is Tequila Cuadra S. de R.L. de C.V. v. Manufacturera de Botas Cuadra, Opp. No. 91282327 (TTAB May 8, 2025). Keep business plans, budgets, and correspondence with US distributors.
3. Foreign priority, §44(d): if you filed in a treaty country in the last six months, your US application can claim that earlier date (15 U.S.C. §1126(d)).
4. Foreign registration, §44(e), or a Madrid designation, §66(a): a home-country registration, or an international registration extended to the United States, can support US registration without proof of use before registration (see Madrid designations into the US).

You still need a bona fide intention to use the mark in US commerce under §44 and §66(a). And use catches up with every registration. Between the 5th and 6th year after registration you must file a declaration of use, under Section 8 or Section 71, with specimens (15 U.S.C. §§1058, 1141k). A mark not used for three consecutive years is presumed abandoned (§1127). In the USPTO's audits from November 2017 to April 2021, owners could not verify the use they had claimed for 47 percent of audited §1(a) registrations. The figures were 64 percent for §44(e) registrations and 67 percent for §66(a) registrations (USPTO audit webinar, June 3, 2021). See keeping your registration alive.

Identifying goods the US way

US practice requires goods and services to be described in specific, ordinary terms, in the correct class. Broad class headings and general terms accepted elsewhere are often refused here as indefinite (TMEP §1402.01). The USPTO's ID Manual lists acceptable entries. In a §44 application, the US identification cannot be broader than the foreign registration.

Who may file for you

Since August 3, 2019, applicants, registrants and parties whose domicile, meaning their principal place of business, is outside the United States must be represented before the USPTO by an attorney who is an active member in good standing of the bar of a US state (37 C.F.R. §2.11(a); 84 Fed. Reg. 31498 (July 2, 2019)). The USPTO adopted the rule in response to inaccurate and possibly fraudulent filings by foreign applicants, including use claims supported by altered specimens, and to unauthorized practice by people not allowed to represent applicants. Because attorneys are subject to the USPTO's disciplinary rules, misconduct can be addressed. Foreign attorneys, unless licensed in a US state, cannot represent applicants before the USPTO. They can work with US counsel. Every applicant must also give its domicile address (37 C.F.R. §2.189). Giving a false US address to avoid the rule is improper. The USPTO lists fake owner addresses among the practices it warns about and pursues (USPTO, caution and misleading notices).

The USPTO "cannot aid in the selection of an attorney" (§2.11(a)).

When an attorney earns their fee

For a foreign-domiciled business, a US attorney is required. The fee is best spent on choices made before filing. Which basis or bases to use. Whether to claim §44(d) priority before the six months run out (15 U.S.C. §1126(d)). How to word the goods for US practice. Whether an earlier US user already holds rights in your mark. Those choices are hard to undo later.

This guide is general information, not legal advice. For foreign-language marks, see our commentary on KAHWA and the doctrine of foreign equivalents.