In our increasingly competitive business world, some brands will inevitably land on the same name. Sometimes, they can operate in perfect harmony, such Delta Airlines and Delta Faucets. At other times, it’s a cause for expensive lawsuits and long-run legal battles.
One solution is to determine which business was using the name first, and to give them some priority rights. “First to File’ is one such condition of priority. Some countries strictly follow “First to File,” while others, including the U.S., maintain certain protections for those who were first to use the name in commerce, regardless of when trademark applications were filed. The differences between these systems, global distribution, and critical exceptions can determine whether a business keeps or loses its identity. Let’s map out what you need to know.
First to File vs. First to Use
Two systems dominate trademark law worldwide: First to File and First to Use. Both systems handle trademark rights in fundamentally different ways.
Under First to File, whoever submits their trademark application first gets the rights. It doesn’t matter if someone else has been using the mark for years. In Japan, a First to File region, a Japanese entrepreneur could use a brand name for a decade, but if another company files for that trademark first, the original user loses their rights.
First to Use works differently. It rewards the first business to actually use the trademark in commerce. A company can establish rights by conducting business, even without filing paperwork. They can even challenge later trademark registrations by proving they used the mark first.
Each system has trade-offs. First to File creates clarity: just check the registry to see who owns what. However, it can feel unfair when long-time users lose their brands. First to Use protects small businesses that might not know about registration, but it makes ownership less certain and disputes more complex.
Is the USPTO First to File or First to Use?
The United States Patent and Trademark Office (USPTO) follows First to Use principles at its core. While many countries switched to First to File, the U.S. held onto its traditional approach, protecting businesses that use trademarks in actual commerce. This is essential information for American entrepreneurs and business owners.
Let’s say you started selling “Cloud Nine Coffee” in 2020 but never registered the trademark, and then in 2023, another company tries to register your name. Under U.S. law, you can block their registration by proving you used the mark first. Your sales records and advertisements become powerful evidence of your rights.
The U.S. system does include some First-to-file elements. Filing an “intent to use” application reserves your rights before you start business operations. Getting federal registration gives you nationwide protection.
However, the key point remains: In the U.S., using a trademark in commerce creates rights, even without registration. Small businesses often rely on these “common law” rights when they can’t afford immediate registration. That’s what makes American trademark law different from most other countries.
Which Countries Use First to File?
Most major economies use First to File systems. China, Japan, and the European Union award trademark rights to whoever files first. They prioritize their trademark registries over historical usage claims.
Here’s an exhaustive list of countries using the first-to-file principle:
- Algeria
- Anguilla
- Argentina
- Austria
- Belarus
- Belize
- Benelux
- Bolivia
- Botswana
- Brazil
- Chile
- China
- Colombia
- Croatia
- Curacao
- Czech Republic
- Dominican Republic
- Ecuador
- El Salvador
- Estonia
- European Union
- Finland
- France
- Germany
- Greece
- Guatemala
- Hungary
- Iran
- Japan
- Jordan
- Kazakhstan
- Kuwait
- Kyrgyzstan
- Lithuania
- Mexico
- Moldova
- Montenegro
- Nicaragua
- Nigeria
- Norway
- Peru
- Philippines
- Poland
- Qatar
- Romania
- Russian Federation
- Slovenia
- South Korea
- Spain
- Syria
- Taiwan
- Uganda
- Ukraine
- United Kingdom
- Venezuela
- Vietnam
- Zambia
If you plan to do business in First to File countries, you must register your trademarks early. Your history of use generally won’t protect you if someone else files first.
Exceptions to First to File
First to File rules aren’t always set in stone. Several countries mix their trademark systems with interesting twists that protect unregistered marks.
The UK is one example of this system. While it follows First to File, it also recognizes “passing off” rights, which allow a business using an unregistered trademark to sometimes stop others from registering or using similar marks. A local café that has operated for years might prevent a newcomer from registering its name, even without having filed first.
Spain offers protection for well-known marks, even unregistered ones. A Spanish company that has built strong brand recognition can challenge similar trademark applications. The catch? They’ll need solid proof that their mark was well-known before the other party’s filing date.
These exceptions create breathing room for businesses that haven’t registered their marks yet. But they’re not guaranteed safeguards — proving your rights under these exceptions often requires substantial evidence and legal work.
Wrapping Up
Navigating trademark rights across borders means juggling two different systems. The U.S. stands mostly alone with its First to Use approach, while most other countries follow First to File rules.
This split creates challenges and opportunities; you might have solid rights in America based on years of business operations, but those same rights mean nothing in China or Japan without proper registration.
Building international trademark protection takes strategic timing and careful planning. Each market needs its own approach, especially when you factor in exceptions like the UK’s “passing off” rule or Spain’s protection for well-known marks. Need help plotting your trademark strategy? Our Trademark Research team specializes in searches that spot potential conflicts early. Protect your brand today.
