Is trademark registration an early bird?

I often hear in the news that someone has applied for a trademark for a word that has become popular around the world! Is it possible for anyone to register a trademark without permission even if it has nothing to do with you?

Yes, you can register a trademark. Trademarks are basically “first come, first served”, so aside from violations of the rules of fiduciary responsibility, anyone can register a trademark.

Eh! Really? Then it means that someone else who doesn’t know about it will preempt me even though it’s a word I thought up.

Often times, words that have been popular on TV or the Internet are registered as trademarks and become the topic of conversation.
However, did you know that it is not always the person who said the word who registered the trademark?
The reason why this happens is because ” the first person to register a trademark wins”.
In legal terms, this is called the “first-to-file” principle.

In this article, we will explain what we mean by “first-to-file” and what problems this can cause.

What is the early bird gets the worm (first-come, first-served)?

When multiple applications are filed for the same/similar trademark, the first applicant to file an application with the Patent Office will be granted a trademark registration.

Article 8 of the Trademark Law provides as follows
“Where two or more applications for trademark registration are filed on different dates for identical or similar trademarks to be used in connection with identical or similar goods or services, only the applicant with the earliest trademark application shall be entitled to register his trademark.”

In other words, as long as an application is filed first, a later applicant will not be granted registration even if another person uses the same trademark first.
This is due to the fact that, unlike patents and designs where novelty is an issue, a trademark is a choice, and therefore does not deserve protection simply by being chosen.

What is the first-use principle?

In contrast, there is the first use principle, which grants trademark rights to those who use the trademark first. One of the most well-known countries that have adopted this system is the U.S. first use doctrine.

There are two ways to file a trademark application in the U.S.
(1) the method of claiming use of the trademark in the U.S., and
(2) filing an unused trademark application and submitting evidence of use before registration.

In the case of (1), the date of commencement of use in the U.S. takes precedence over the actual trademark application date.

With method (2), even if an allowance is granted, registration is not granted until proof of use is submitted, so it may take several years before rights are granted.

Thus, in the U.S., I can only register a trademark that is actually in use, so I cannot use a preemptive trademark like in Japan or China.
Applicants need to make some prediction of the planned use of the trademark before filing an application in the U.S.

Can’t get back a preempted trademark?

What should I do if someone else has preempted my trademark?
If you use that trademark, it is an infringement, so you must stop using it and change your trademark if you are using it.

If you want to use a registered trademark that has been preempted, you may have to either give it away or, if not, you may have to enter into a license agreement.

The reason for the large number of preemptive trademark applications is to file first and then sell the trademark at a high price to someone who really wants to use it later, or to charge a high royalty fee.

In addition, there may be cases where a company in the same industry pre-emptively registers a trademark that is well-known in a foreign country in order to prevent foreign competitors from entering the market.

However, you may be able to cancel a preempted trademark registration for the following reasons

How can I challenge a trademark that has been registered without my permission?

As mentioned above, if someone else takes my registered trademark before I have obtained it, do I have any choice but to negotiate with them?
It is scary to start negotiating without knowing for what purpose the registered trademark was acquired.

If the preempted trademark falls under any of the following trademarks, you may be able to cancel/vacate the registered trademark.

• (i) Trademarks identical or similar to an unregistered well-known trademark (Article 4(1)(10))
• (ii) A trademark that is likely to cause confusion with goods or services pertaining to the business of another person. (Article 4(1)(xv))
• (iii) A trademark that has become famous in Japan or a foreign country and is used for unfair purposes (Article 4(1)(19))
• (iv) A trademark that has never been used in Japan for a continuous period of at least three years after registration (Article 50(1))

※It may be possible to cancel the registration by filing an opposition within two months from the date of publication of the trademark publication.

*Even if (i) and (ii) are applicable, if there is no unfair purpose, a request for invalidation trial cannot be filed more than 5 years after registration.
For (i), (ii) and (iii), a request for invalidation trial need to be filed, and for (iv), a request for cancellation of non-use need to be filed.

If any of the above may apply to your case, please contact us, a patent law firm specializing in intellectual property. We will do our best to help you find a solution.

Summary

Thus, it is wise to file your trademark application as soon as possible, as the “early bird gets the worm”.
If you are preempted, please consult with our expert patent attorneys.

AmazingDX makes it easy to search for registered trademarks that are identical or similar to your trademark. Once you have identified the possibility of registering your trademark, you can request an application online.
Please take advantage of this service.