When companies launch a new product or service they often spend considerable time and money on just the right name, logo or slogan (e.g. trademarks) to help customers get to know who they are and what they offer. Once you have the perfect name how do you make sure someone else doesn’t come along and steal it out from under you while you are building your business? In other words, how do you establish and protect your trademark rights?
In the U.S. trademark rights begin when the mark is actually used to promote goods or services to the public. This is different from many other countries where the rights begin when a trademark is filed for registration. While registration is not required in the U.S., there are significant benefits gained by registering your trademark with the U.S. Patent Trademark Office (the USPTO). These include, notice to the public of ownership, a legal presumption of the ownership and the exclusive right to use the registered trademark with the related goods and services.
Registering with the USPTO also provides the owner with nation-wide rights, even if they are only doing business in a limited number of states. Absent registration, a mark owner may be limited to the geographic area where the mark is actually being used.
Following are examples of how trademark rights are gained in the U.S. by simply using a mark without filing and by filing with the USPTO.
Rights Without Filing
Trademark rights can begin as soon as a business starts using their mark to promote their goods and services. These are often referred to as common law rights, and such are limited to the location where they are actually doing business. For example, if an organic soup cafe opens for business under the name TRADEMARK SOUP in Tennessee and then expands across Florida, New York, Washington and California, the mark owner would gain rights to the mark in connection with the specific goods that are being sold, but only in the geographic regions where they are doing business.
If a different company comes along and federally registers the name TRADEMARK SOUP for soup with the USPTO, then the prior mark owner would be limited to the 5 states where they are currently doing business. The new company, however, would have rights to use the name across the other 45 states.
Rights Through Filing
When a federal trademark application is filed with the USPTO, once granted the mark owner gains nation-wide rights to protect and preserve the use of the trademark in connection with the goods and services that were identified in the application. A federal trademark can be filed under two main basis. For a trademark that is currently being used in business between multiple states, a “current use” application can be filed. For a trademark that will be used in the near future, an “intent-to-use” application can be filed, which preserves rights while a business is bringing their goods or services to market.
While federal registration does not take away from pre-existing common law trademark rights, it can limit their expansion to other markets.
One side note, if a business does not intend on expanding outside of a single state they can register with the state trademark registry, which preserves state wide rights to the mark for the goods and services that are identified in the application.
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