Colorado Trademark Attorney Answers Frequently Asked Questions: Part 1
Q: Do I have to have a federal trademark registration to have rights in a trademark?
A: This one we get asked a bunch. In fact, if I had a dollar for every time I was asked this question . . . well needless to say I probably wouldn’t be sitting here doing this blog post.
Contrary to popular belief, trademark rights do not arise through the actual registration of the trademarks. Trademark rights arise through an individual's or company's use of the trademark to identify their goods or services in commerce. The rights that arise though this use are referred to as common law rights. Common law rights have certain characteristics. First, the rights extend only to the geographic area that they are being used. Therefore, two people could be using the exact same trademark for the exact same goods and if the territories in which they are offering their goods or services do not over-lap, each person has a right to use the trademark and cannot prevent the other from using it. Secondly, common law trademarks do not carry any presumptions with them at trial. This means that no matter how long you have been using the trademark you will have to prove 1) that the identifier rises to the level of being a trademark and is not merely a generic term or a term that is merely descriptive of the good or service that it identifies, 2) that you are entitled to use the trademark and 3) that the defendant is using the trademark in the same geographic area. Additionally, you will need to prove that the defendant had knowledge that you considered the identifier a trademark (which can usually be satisfied by using the TM symbol with your mark). Lastly, you will have to prove your actual damages with a good degree of certainty. Often times this is a difficult and laborious proposition. If two people in the same geographic area are using the mark and neither has registered it, the individual or company that has the earliest first use date will have the rights to use the mark – the other is well, absent any other circumstances out of luck.
Although you don’t have to have a federal trademark registration to have rights in a mark, federal registrations do confer some extra added benefits that can be hugely valuable to your business – we will talk about those benefits in a future post.
A: This one we get asked a bunch. In fact, if I had a dollar for every time I was asked this question . . . well needless to say I probably wouldn’t be sitting here doing this blog post.
Contrary to popular belief, trademark rights do not arise through the actual registration of the trademarks. Trademark rights arise through an individual's or company's use of the trademark to identify their goods or services in commerce. The rights that arise though this use are referred to as common law rights. Common law rights have certain characteristics. First, the rights extend only to the geographic area that they are being used. Therefore, two people could be using the exact same trademark for the exact same goods and if the territories in which they are offering their goods or services do not over-lap, each person has a right to use the trademark and cannot prevent the other from using it. Secondly, common law trademarks do not carry any presumptions with them at trial. This means that no matter how long you have been using the trademark you will have to prove 1) that the identifier rises to the level of being a trademark and is not merely a generic term or a term that is merely descriptive of the good or service that it identifies, 2) that you are entitled to use the trademark and 3) that the defendant is using the trademark in the same geographic area. Additionally, you will need to prove that the defendant had knowledge that you considered the identifier a trademark (which can usually be satisfied by using the TM symbol with your mark). Lastly, you will have to prove your actual damages with a good degree of certainty. Often times this is a difficult and laborious proposition. If two people in the same geographic area are using the mark and neither has registered it, the individual or company that has the earliest first use date will have the rights to use the mark – the other is well, absent any other circumstances out of luck.
Although you don’t have to have a federal trademark registration to have rights in a mark, federal registrations do confer some extra added benefits that can be hugely valuable to your business – we will talk about those benefits in a future post.
Labels: trademarks
2 Comments:
Greetings
Simple question for TM Esq.
When amending a 1a Prin App to the Supp Register is the Supp Reg filing date the same as the original filing date of the 1a Prin App that you originally filed?
First, the answer to the question is that if you amend a 1(a) principal register application to the supplemental register, the new filing date will for the application will be the filing date of the amendment. This could have an impact because you basically loose your priority date of the principal register application.
For those of you that are not familiar with the supplemental register - it is basically a limbo type place for potential marks that are not inheriently distinctive or have not yet achieved secondary meaning to wait until they are eligible for rigistration on the principal register. Don't worry if the above discussion sounds like greek to you - I think we now have our next topic for the series.
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