The purpose of trademark law is to protect branding and to prevent consumer confusion as to the source of products and services. If you own a business, you most likely already have trademark rights, regardless of whether you have registered your trademark with the U.S. Patent & Trademark Office. This may come as a surprise to you, as most people think you have to file a trademark application to acquire trademark rights. So how do you go about acquiring trademark rights? Is there a form you have to fill out? Do you have to know a guy? In this post, I will discuss the two main types of trademark rights in the United States and how they are acquired.
Common Law Trademark Rights
In the U.S., trademark rights are created through commercial use of a trademark with products and/or services. This is done by advertising and providing products or services in connection with the trademark. Once a trademark user is advertising and providing their products or services, they acquire common law trademark rights. While you do not have to have a high volume of sales to claim common law ownership of a trademark, a one-time sale or sales made strictly for the purposes of claiming the associated trademark rights, such as sales to friends or family members, are generally not sufficient. Once acquired, your trademark rights can last as long as the trademark continues to be used.
While common law trademark rights are easy enough to acquire, they do have limitations. The biggest limitation is that these rights are geographically limited to areas in which you actively market and sell your products and services. For example, if you are a restaurant with a single location in Phoenix, your rights would likely only extend to the Phoenix area. It is unlikely that you could make a claim of trademark infringement against a restaurant in Chicago using the same trademark. This limitation can obviously create problems for business owners. Let’s say that the Phoenix restaurant owner wants to open a second location in Chicago. If there is already a Chicago restaurant with the same name, the owner of the Phoenix restaurant would likely be infringing upon the rights of the Chicago restaurant.
One way to avoid the geographical limitations of common law trademark rights is to acquire a U.S. trademark registration with the U.S. Patent & Trademark Office.
Federal Registration
We have all heard the word “trademark” used as a verb. Generally, when someone says they want to “trademark” something, what they mean is that they want to register it with the U.S. Patent & Trademark Office. However, a federal trademark registration is not the source of your trademark rights. Instead, federal registration expands upon the common law rights you acquired by using your trademark in commerce.
The trademark registration process begins when you file an application with the USPTO. Registration of your trademarks provides you with many important benefits and protections. As I mentioned, trademarks registered with the USPTO do not have the same geographical limitations as common law trademarks. A federal registration gives its owner the legal presumption of ownership of its trademark throughout the United States. It also prevents others from registering confusingly similar trademarks with the USPTO. Having a federal registration also makes it easier to go after someone for infringing upon your trademark rights, or if you need to defend against a trademark infringement claim made against you or your business.
Scope of Rights
Regardless of whether you have trademark rights through common law use or registration, the scope of your rights depends on the strength of your trademark. More distinctive trademarks receive a broader scope of protection. That is true whether you are dealing with common law rights or federal trademark rights. Having a federal registration for a weak trademark means that others can use something closer to your trademark without necessarily infringing upon your rights. On the other hand, if you have a very strong trademark such as a coined term, it will be easier for you to go after others if they try to use or register a trademark that might not be as close to your own.
Do You Have Questions About Your Trademark Rights Under the Law?
If you have any questions about your trademark rights, or want to look into acquiring a federal trademark registration, please feel free to 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.
