Trademark Rights – Common Law v. USPTO Registration

by Bobby Lutzker, Attorney

In the US, there are overlapping systems of trademark rights.  Common law rights arise simply by using your mark in your business.  These rights are limited to the geographic territory in which you operate, and as between you and any competitor using a similar mark, first use in the relevant territory usually wins.

Under federal law, you can register your mark with the US Patent and Trademark Office.  Registration is not a substitute for common law rights – in fact, actual use of the mark (i.e., having common law rights) is a requirement for registration, although you can start the application process before first use (with an “intent to use” application).  But registration can greatly enhance your trademark rights.  Here are some of the benefits of registration:

  • Put the world on notice.  People check the USPTO database before choosing a new brand.  If they see your mark in the database, they’ll think twice (or should think twice) about choosing a brand that potentially infringes your rights.
  • Registration counts as nationwide use.  If your mark is registered, you are deemed to have used the mark throughout the US as of the date of your application, even if your actual use is limited to one state or region.  That means that anyone who began using a similar mark for similar goods/services after the date of your application needs your permission for their use, even if you haven’t yet expanded to their territory.
  • Ability to use the ® symbol.  You can use layman symbols TMor SM without a registration, but you need a registration to use the ® symbol, which has the greatest power to strengthen your trademark rights and deter competitors.
  • Defeat cybersquatters.  A registration can help you quickly resolve domain name disputes and take down cybersquatters.
  • Technical legal advantages.  Registration confers a number of technical legal advantages, making it easier to enforce your rights against potential infringers and harder for others to claim that your use infringes their rights.  These would be crucial if you ever had to go to court to enforce or defend your rights, but more importantly they will help you avoid disputes by making the cost too high for your competitors.  This is especially true if you have a descriptive mark (i.e., a mark that tends to inform the public about characteristics of your goods or services), because the USPTO’s determination that a descriptive mark is fully protectable carries a lot of weight.

If you have a brand with hard-earned value, or if you’re developing a new brand, there are lots of good reasons to register your mark with the USPTO.  We can help you figure out the likelihood that your mark could be successfully registered, and we can guide you through the registration process if you want to move forward.

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Specializing in both traditional and new economy law (benefit corporation, cottage food, sharing economy, crowdfunding, etc.), Cutting Edge Counsel offers a full menu of legal services to organizations of the new economy. Contact us at info [at] cuttingedgecounsel.com.
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