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The Zest

Someone Used the Name Before You but Never Registered. Who Wins?

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"I registered my trademark, and now I've found a business that's been using the same name for years without registering. Who wins?" Usually, both of you, in different places. In the United States, trademark rights come from use, not from filing. An earlier user keeps its rights in the area where it was already doing business, even after you register. Your registration gives you nationwide priority everywhere else, counted from your filing date, and it stops the earlier user from expanding into your territory.

Here's how the line gets drawn.

Rights start with use, not paperwork

The Supreme Court put it plainly more than a century ago: the right to a particular mark grows out of its use, not its mere adoption. In that 1918 case, a Massachusetts company had used REX for a medicine since the 1870s, mostly in New England. A Louisville druggist started using REX for his own product in the 1880s, in good faith, without knowing about the first one. When the Massachusetts company's successor finally moved into Kentucky, it couldn't push the Louisville business out. The Court held that a newcomer to a market has to enter it subject to whatever rights were already acquired there in good faith.

That's the heart of common law trademark rights. You don't need a registration to have them. But without one, your rights generally reach only as far as your actual business does.

What registration adds: a nationwide claim from your filing date

A federal registration changes the map. Once your mark registers, the law treats your filing date as if you'd used the mark everywhere in the country on that day. That's called constructive use, and it gives you priority nationwide over anyone who starts using a confusingly similar mark after your filing date.

The statute carves out the people who got there first. Constructive use doesn't give you priority over someone who was already using the mark before your filing date and hasn't abandoned it, or someone who had already filed. Those earlier users keep what they had.

The earlier user's territory, frozen in place

So what exactly do they keep? It comes down to the area where they actually used the mark.

The defense the statute gives an earlier user who adopted the mark without knowing about yours, and used it continuously from before your filing date, applies only for the area in which that continuous prior use is proved. Think of it as a freeze. The earlier user keeps its home turf as it stood, and everything outside it belongs to your registration. If it later wants to open in a new city, it's moving into your territory, not its own.

The classic example is a burger restaurant in Mattoon, Illinois. Local owners opened a BURGER KING there in 1957, without knowing about the Florida company that had opened its first BURGER KING in Jacksonville in 1953. The Florida company got its federal registration in 1961 and expanded across Illinois. The court let the Mattoon owners keep the name in their local market, defined as a 20-mile radius around their restaurant, and gave the federal registrant the rest of the state. The Mattoon owners had also registered the name under Illinois law, and it didn't matter: the state registration didn't give them statewide rights against the federal registrant. That's one reason a state registration and a federal one aren't interchangeable.

Incontestable doesn't mean untouchable

After five years of continuous use following registration, an owner can file to make the registration incontestable, which turns it into conclusive evidence of the owner's rights, subject to a short list of defenses. Even then, the statute makes an exception for anyone with a valid right acquired under state law by use that began before the registration and has continued ever since. A registration can become incontestable. The earlier user's pocket of territory doesn't disappear.

There's a flip side for the registrant, too. If the other business started using the name before you did, not just before you filed, it may have the better claim to the mark itself. A petition to cancel a registration on any ground, including someone else's earlier rights, has to be filed within five years of the registration date. After that, the grounds for cancellation narrow to a short list, like abandonment, genericness or fraud.

What to do with this

If you're the one who registered, your registration is still doing most of the work. You have priority everywhere the earlier user isn't, and it can't grow into your space. But you may have to share the name in its area, and if it was first, you'll want to know that early, inside the five-year window, not after.

If you're the earlier user who never registered, your rights are real, and they're local. Keep records of when you started using the name and where you sell: the defense only covers the area you can prove. Keep using it, too. The protection depends on continuous use, and abandoning a mark ends it. And if nobody has registered the name yet, think about filing now, because every month you wait is a month someone else's filing date can get ahead of you everywhere you haven't reached.

Why a good search looks for unregistered use

This is the reason a trademark search can't stop at the USPTO's register. An unregistered business with a head start can carve a hole in your registration, or, if it was first, put the registration itself at risk. A real clearance search looks at state registrations, business filings, websites, social media and marketplaces for exactly this kind of quiet prior user. And remember that your LLC filing isn't a trademark either; forming a company under the name doesn't give you priority over someone already using it.

If you've found an earlier user of your name, or want to look for one before you file, you can see how the search and filing packages work on the services page, and the FAQs page answers most of what comes up before a first call.

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(No legal advice is given on the discovery call. It's a chance to tell me what you're building and hear how the process works.)

Sources

This article is general information, not legal advice. Reading it does not create an attorney-client relationship.

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