As I understand it, first-to-use ownership of a mark trumps first-to-file. If that is true, why spend money on getting a trademark for your business name?

  • 1
    Those rules vary by country. Are you in the US? Or soem other country? In some countries no trademark is protected unless it is registered, although that is not the case in the US. Commented May 29, 2019 at 22:05

2 Answers 2


Because a Registered trade mark give statutory rights while an unregistered one only gives common law rights

For example, for , a summary of the differences can be found here:

Enforcing an Unregistered Trade Mark

An unregistered trade mark has limitations in the level of protection it can provide to its owner. For an unregistered trade mark, any right to ownership of the trade mark needs to be proven. It is easier to confirm your enforceable rights to exclusively use a registered trade mark. This is because your rights immediately arise once it is registered.

According to the common law, a substantial level of evidence will be needed to demonstrate an unregistered trade mark’s use. The owner of an unregistered trade mark often needs to prove that a reputation has been established, and their level of protection will only correspond to the area where they have established that reputation. A registered trade mark, on the other hand, provides protection Australia-wide.

For example, in my business I would have no trouble proving a reputation for my goods and services is Sydney. I would have no chance of proving it in Melbourne or Brisbane or even in Wollongong or Newcastle so anyone can use my common law trade marks for the same goods and services outside Sydney and I couldn't stop them.

  • In the U.S. there is the intermediary option between registration and non-registration to file a state trademark, which provides no presumptions of validity but provide good evidence of date of first use in an entire state, and puts the world on notice as to your claim of trademark rights discouraging others from attempting to register it in a way that conflicts with your claim.
    – ohwilleke
    Commented May 31, 2019 at 2:40

A trademark shows the court that you have created and registered something if you have to enforce it through the courts.

If you went to court just saying a trademark is yours, anyone could do it for any trademark.

  • 1
    This is contrary to the law pertaining to unregistered trademarks in both the U.S. and Australia and in many other jurisdictions as well.
    – ohwilleke
    Commented May 31, 2019 at 2:41
  • No offense, but the other answer literally says about the same thing. How is this contrary then? "For an unregistered trade mark, any right to ownership of the trade mark needs to be proven."
    – Putvi
    Commented May 31, 2019 at 15:53
  • Proof of "use of the mark on goods in commerce" is sufficient to show ownership of a non-registered trademark in the USA, if not also in other countries that recognize the right to enforce such things.
    – Upnorth
    Commented Sep 4, 2019 at 23:23

You must log in to answer this question.

Not the answer you're looking for? Browse other questions tagged .