Where Do Trademark Rights Come From?
Trademark rights in the United States are not “rights in gross.”
Just because you registered your mark for specific goods and services doesn’t mean that you can prevent another from using the same or similar mark for unrelated goods or services. Only if the second adopter’s use creates a likelihood of confusion (the test for trademark infringement in the United States and throughout the world) with your use, may you prevent the second adopter’s use. But please note, that in order to stop such use, you may have to file a trademark infringement lawsuit.
- Common Law or Unregistered Trademark Rights – USPTO Trademark Registration is not a requirement to acquire trademark rights in the United States. Trademark rights come from using the mark on specific goods and services in specific geographic areas. This is called “common law” use. USPTO Registration gives you nationwide trademark rights in the mark, but a prior common law user may still have enforceable trademark rights against a subsequent registration. Thus, it is highly recommended to always conduct comprehensive trademark searches to reveal any unregistered common law use of similar marks that could negatively impact your adoption, use and registration. If you have any questions on these issues, fee free to contact our attorneys to discuss.
- Foreign Trademark Rights – Trademark Rights are Territorial. A USPTO Registration only cover the United States. If you want protection in other jurisdictions, such as Canada, the European Union, Japan or Australia, you need to file a separate application in that particular jurisdiction. We have assisted many clients expanding their trademark rights outside the United States. Please feel free to contact us to discuss acquiring trademark rights outside the United States.
Common Law or Unregistered Trademark Rights
In the United States, Common Law Trademark Rights or unregistered trademarks come from adopting and using the mark for certain goods and/or services. In other words, you must always “use” the mark to acquire trademark rights in the United States. Merely adopting or thinking up a mark without actual use does not grant you protectable and enforceable trademark rights.
- Limited Geographic Area – The main limitation on common law rights is that your rights are limited to the geographic area of your use; and
- Notice to Competitors – Without Federal registration, your use may not be known by third parties. By filing a USPTO Trademark Application, your mark will more likely come up in a trademark search. Frequently, such filing on the USPTO trademark register ends up being sufficient to convince a competitor to choose an alternative mark.
U.S. Registration – What Are The Benefits of Federal Trademark Registration?
Federal or USPTO Registration – Once a trademark is cleared for adoption and use, we strongly recommend that TrademarkAuthority register the mark with the United States Patent & Trademark Office (“USPTO”).
USPTO Federal registration provides several significant benefits, including:
- Filing an intent-to-use (ITU) trademark application reserves your rights in the mark prior to your actual use of the mark in commerce;
- Nationwide priority of trademark rights (constructive use) as of your filing date even if your use is limited in geographic area or scope;
- A USPTO Trademark Registration Certificate provides prima facie evidence of your ownership of the mark;
- A USPTO Trademark Registration gives you the right to use the Federal Registration symbol ®. If you do not Federally register your mark, you may only use the “TM” designation, which means you are claiming common law or unregistered trademark rights in the mark;
- Federal registration provides potential notice to third parties of your prior trademark rights. Third parties will likely find your registration when conducting trademark clearance searches and in most circumstances, refrain from adopting a similar mark; and
- Your registration may be filed with U.S. Customs Service to prevent importation of infringing goods.
TrademarkAuthority is a service exclusively licensed to Pearl Cohen Zedek Latzer Baratz LLP ("Pearl Cohen"), an intellectual property law firm located in New York, NY, that provides personal and expert
trademark and copyright legal services covering the U.S., Europe, Canada,
Australia, Mexico, Japan, China and many other countries throughout the
world. This Web site may be considered Attorney Advertising. The information provided on this site is not legal advice, but general information on legal issues relating to trademark searching and registration. Prior results do not guarantee a similar outcome.
TrademarkAuthority was founded by an expert trademark attorney and former U.S. Trademark Office Examining Attorney who
has over twenty-two years experience representing clients on a variety of
trademark and copyright law issues. Our legal services include trademark searching,
filing trademark applications, responding to USPTO Office Actions, filing Statements of Use, representing clients before the U.S.
Trademark Office, Federal and State courts, maintaining trademark
registrations, monitoring, policing and enforcing trademark rights and filing copyright registrations.