The Situation and Why It Happens
A business discovers that a competitor, or sometimes a stranger with no obvious connection to the industry, has filed a federal trademark application for a mark that is identical or confusingly similar to something the business has been using for years. It is a jarring situation, but it is not necessarily fatal. The U.S. trademark system is use-based, which means that prior commercial use of a mark creates rights that exist independently of registration. The question is whether and how those rights can be asserted against the later filer.
One of the most effective ways to avoid this situation entirely is trademark monitoring, which tracks new USPTO filings for conflicts with your existing marks and alerts you while the opposition window is still open.
Understanding Your Position as a Prior User
If you have been using a mark in commerce before the date on which a later applicant began using theirs, you are what trademark law calls a senior user. Senior users have rights that predate the junior filer's application, and those rights can be used to challenge the application or the resulting registration. The fact that someone else filed first does not automatically eliminate your claim; it means you will need to affirmatively assert your prior rights through the appropriate legal process.
The scope of your rights as a prior user depends significantly on the geographic reach of your use. If your use has been limited to a specific region, your rights are generally limited to that territory. If your use has been nationwide, even if your customer base is concentrated in one area, your rights are correspondingly broader. Documentation of your use across different markets, including sales records, shipping records, advertising, and customer communications, is what establishes the extent of your territory.
The Opposition Window
Before a trademark application can become a registration, it must be published in the USPTO's Official Gazette for a 30-day opposition period. During that window, any party who believes they would be damaged by the registration can file a trademark opposition with the Trademark Trial and Appeal Board. If you learn about a conflicting application prior to the end of this window, filing an opposition, or at minimum requesting a 30-day extension of time to oppose, is the most direct way to prevent the application from proceeding to registration without a fight.
Extensions of time to oppose are routinely granted and can provide additional time to evaluate your position, gather evidence, and attempt a negotiated resolution with the applicant before committing to a full TTAB proceeding. An opposition that is filed but later settled through a coexistence agreement or consent is a common and often practical outcome.
Cancellation After Registration
If the application has already passed through the opposition period and a registration has issued, the option of opposition is no longer available. However, a federal trademark registration can be challenged through a cancellation proceeding at the TTAB, filed by any party who believes it is or will be damaged by the registration.
The grounds for cancellation include likelihood of confusion with a prior mark, fraud on the USPTO in obtaining the registration, abandonment, and others. For a prior user asserting common law rights, the relevant ground is typically that the registration creates a likelihood of confusion with the prior user's mark. The prior user bears the burden of proving its prior use and the likelihood of confusion. Cancellation proceedings, like oppositions, are adversarial processes with discovery, briefing, and a final decision by the TTAB, subject to appeal.
One important timing consideration: certain cancellation grounds become unavailable after a registration has been in force for five years and the registrant has filed a declaration of incontestability. A registration that crosses the five-year mark with an incontestability filing in place is substantially harder to cancel on likelihood of confusion grounds. The window to act on those grounds is not unlimited.
Your Practical Options
When a competitor or third party has filed for a mark you have been using, the realistic options are to oppose the application or petition to cancel the registration, negotiate a coexistence or consent agreement that allows both parties to continue operating, pursue a license or assignment if the relationship with the other party allows for it, or in some cases, do nothing, if the competitive overlap is minimal and the cost of a proceeding outweighs the risk.
The right answer depends on the strength of your prior use evidence, the degree of overlap between the marks and the goods or services, the financial resources available for a proceeding, and the strategic importance of the mark to your business. An attorney can help you assess those factors and develop a response that is proportionate to the actual risk.
If you have found a conflicting application or registration and want to understand your options, schedule a free consultation.
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