A good percentage of my clients operate online-only businesses. These include businesses that make and sell products through their own websites, Amazon, or other similar platforms. I also work with businesses that offer services online, such as website design, marketing services, or providing software-related services. In fact, my own trademark law practice is conducted almost entirely online. Online businesses have a unique set of circumstances when it comes to trademarks. While trademark registration is always important, registering online business trademarks is even more essential.
Common Law vs. Federal Trademark Rights
With trademarks, it is always important to understand the differences between common law rights and federal rights. To summarize, common law rights are trademark rights that you receive just by using your trademark with your products and/or services. To receive federal rights, you have to first get a federal trademark registration from the U.S. Patent & Trademark Office. One of the biggest advantages of getting the federal trademark registration is that it expands your rights in your trademark to the entire United States. With common law rights, on the other hand, your rights are geographically limited to the area where you use the trademark.
This difference is very important when it comes to online business trademarks. Let’s say that you have an online store where you sell t-shirts. You may have customers scattered all over the country using your store to order shirts. However, you may only get orders from customers in a particular town or city once every couple years. Does that mean that you have established common law trademark rights in that town? That question is very difficult to answer.
What if a physical clothing store using the same name as your online store opens in one of these towns? Can you prove that you had rights there first? Or can they make you stop selling to customers there? This is something a judge will most likely have to decide, only after you pay an attorney a lot of money to argue in your favor. On the other hand, if you register your online business trademark, you have the legal presumption of nationwide rights to your name as of the date you filed your application. That means if the new store opened after your filing date, then they are infringing on your trademark.
Avoiding Confusion in the Internet Age
The above example demonstrates how having a registration can save you time and money dealing with potential trademark infringement issues. But there is also a practical aspect: you don’t want your online customers to be confused!
Before the Internet, when a fast-food hamburger place opened up in Akron, Ohio and another restaurant opened under the same name in San Diego, California, it wasn’t a big deal unless the owners of either establishment decided to open new locations and expand. But today, even half a country apart from one another, there are obvious potential issues. The owners might be trying to get the same domain name for their website. They’d both prefer if their restaurant appeared first in Google search results. And if they do plan to expand, they aren’t going to want to have both restaurants with the same name in the same region of the country, much less the same city. Getting a federal registration early on can help to avoid these issues, as one business would have nationwide rights, and could prevent other places from popping up using a similar name.
If the example above demonstrates issues of possible confusion, just imagine dealing with these same issues when your business has no physical location! At least when your business has a physical location, customers can use that to help distinguish you from competitors. When you only exist online though, it’s even more difficult to ensure that you’re not confused with another online business. A dozen companies could all use the same online business trademark without any infringement under common law rights. However, if the first to use the name had registered it with the USPTO, that company could stop all of the others from using the same name.
Amazon Brand Registry
One of the most common reasons online businesses seek trademark registrations is to join the Amazon Brand Registry program. This program gives Amazon sellers a number of important advantages. Perhaps the most important is that it makes it easier to remove other sellers’ infringing products. In the U.S., you must have a federal trademark registration in order to join. Not a pending application, but an actual trademark registration. That means that you have to have completed the registration process, which can often take a year or more. If you plan to sell your products on Amazon, it is a good idea to get an early start for this reason.
Need Assistance with Registering Your Online Business Trademark?
Whether you have a brick and mortar location, make and sell products online, or provide virtual services, you need to protect your brand. Make sure that you are working with a professional with both the knowledge and experience to help you do so. If you would like to discuss federal registration of your trademark, please call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
