Some of the most common questions we get at Cognate are centered around the concept of trademark “use.” Three foundational concepts related to trademark use are actual use, first-to-use, and first-to-file.
Essential to enforcement and protection of trademark rights is the concept of “actual use” (or “use”). Trademark use is achieved when a trademark is used in connection with goods or services, offered for sale. More simply, use is achieved when a company uses a trademark to sell goods or services to customers.
Each country, or “jurisdiction” has its own laws that dictate how companies earn and maintain trademark rights, what level of use is required, and at what point in time use is achieved. In general, countries either adhere by the “first-to-use” system (also known as “common law”), or the “first-to-file” system.
In “first-to-use” jurisdictions (like the United States, India, and the United Kingdom) trademark rights may be earned simply through use of a mark. These are known as “common law” trademark rights. In common law countries, priority may be given to the first user of a mark, and unregistered common law rights can in many cases supersede the rights obtained by registering a trademark with the federal government. For this reason, these rights are also sometimes known as “rights of first use.”
In these countries, it is especially critical for companies to prove not only that their trademark is in use, but also when trademark use began and where it is in use within the country.
In “first-to-file” jurisdictions, trademark rights are derived solely through registration with a government sponsored registration system. However, trademark owners in first-to-file jurisdictions, who have earned rights through their registration of their mark, still must be able to prove that they have achieved use of their trademark in order to maintain their rights. In most first-to-file countries, proof of trademark use still is required within a few years of the trademark registration date.