What Happens if Someone Else Registers My Business Name Before I Do?

Business owners often use their business name in commerce without applying for trademark registration. During that time, another party may successfully register that name. But this doesn’t automatically mean the party that registers the trademark first prevails. If someone else registered your business name first, you should speak with a Miami trademark lawyer.

Who Takes Priority: The Original Business or the Person Who Registered First?

Priority will typically be awarded to the person who can establish superior rights to the trademark. But this is not necessarily the party who registered the trademark first. Trademark rights can arise from the use of the trademark in commerce. So a business that used the trademark first may take priority.

For example, a landscaping business begins using a particular name in connection with its services in 2020. It does not register the name as a trademark. In 2023, another landscaping business uses a confusingly similar name and registers it as a trademark. The first business may have superior rights, especially in the geographic area in which it began using that name.

Can the Original Business Challenge Someone Else’s Trademark Registration?

You may have grounds to challenge another person’s registration of your business name as a trademark. Whether you can do so depends largely on whether the trademark application is still pending or whether it has been successfully registered.

If the trademark is not yet registered, you can challenge the application after it is published in the Official Gazette. A party generally has 30 days from publication to either file an opposition or request an extension. A successful opposition can prevent registration.

If the trademark has already been registered, it may still be possible to file a petition to cancel the registration. This is done with the Trademark Trial and Appeal Board (TTAB). Potential grounds include superior rights to the mark, abandonment, and fraud.

On the other hand, if the original business only begins using the trademark in commerce after the other party’s filing, it will generally have much weaker priority rights.

FAQs: Trademark Registration and Prior Use

How can I document my earlier use of a trademark?

Since prior use of the mark can be a relevant consideration, you will need evidence to prove you actually used it in commerce. This may include advertising, invoices, product packaging, website archives, and other business records. You mainly want to show when and how you used the mark.

Does prior use automatically invalidate someone else’s registration?

Prior use can help you, but it does not necessarily mean the subsequent registration won’t create legal issues. To begin with, your trademark rights may be limited to the geographical area in which you used the mark. 

Can a business seek registration of its intended trademark before it actually uses the trademark in commerce?

Yes. An intent-to-use (ITU) application may establish an earlier filing date for the applicant’s future use of the trademark. Once an ITU application is accepted, it can establish priority over other parties who first started using the trademark after the application’s filing date. Once the applicant actually begins using its trademark in commerce, it can assert priority over another party’s intervening use based on the priority date established by the ITU application. Thus, an ITU application can be an effective tool for a business to obtain superior priority of its trademark in the marketplace. 

Is registering your business as a legal entity the same as filing for a trademark registration?

No, forming an LLC or corporation, or filing for a DBA (doing business as) name, is not the same thing as trademark registration. The former registrations concern the business’s legal entity and status; trademark registration concerns trademark rights in a name used in connection with certain goods and services.

Talk to Our Miami Intellectual Property Law Firm to Protect Your Rights

Timing matters when determining who has priority between the prior user and the registration applicant. By acting quickly, you can protect your intellectual property rights and challenge attempts to undermine them. Get started today by getting in touch with Peretz Chesal & Herrmann, P.L.