Your Trademark Registration May Not Mean You Have Trademark Rights

Brian Hall - October 31, 2016 - Outside General Counsel Law, Trademark Law


In the United States, trademark rights belong to the first user of a distinctive trademark in commerce.  These are known as common law trademark rights.  A trademark registration with the United States Patent and Trademark Office (USPTO) is not required.  That said, there are benefits to registering a trademark with the USPTO.  A federal trademark registration affords many benefits, among them is what is known as nationwide priority.  Put simply, a common law trademark affords the trademark owner with rights only in the geographic locations in which the trademark was used (along with offering/providing the underlying goods or services).  A federal trademark registration, on the other hand, affords the trademark owner with nationwide rights, regardless of use in a particular geographic location.  However, there is a caveat.  If a common law trademark owner’s rights predate a federal trademark registrant’s rights in a geographic location, a concurrent use issue may arise.  As you can imagine, this can create headaches given today’s Internet economy.  Nonetheless, this is an example of a situation where the owner of a federal trademark registration may have prior rights in most, but not all, geographic locations in the United States.  How the parties peacefully coexist, if at all, is commonly the impetus for dispute, including litigation.

Here are some trademark tips should you find yourself subject to a concurrent use proceeding or other dispute involving geographical limitations on usage of a trademark:

  1. It is important for trademark owners to perform trademark clearance searches prior to commencing use of a trademark in hopes of identifying such common law trademark owners.
  2. Despite the United States being a first to use jurisdiction for the establishment of trademark rights, you should file for federal trademark protection as soon as possible in order to avail yourself of nationwide priority.  Keep in mind that one may file an intent to use trademark application with the USPTO, meaning you can apply to register a mark before actual use so long as you have a bona fide intent to use that mark (with proof of the same).
  3. In the event of a dispute, priority of use versus priority of application for registration should be analyzed.
  4. Recognize that concurrent use agreements can allow peaceful co-existence between competing trademark owners, though they must be properly tailored to account for necessary terms and conditions.
  5. A state trademark registration provides little, if any, benefit beyond that afforded under common law.  If you wish to register your trademark, always consider federal trademark registration with the USPTO.

So, remember, just because you own a federal trademark registration does not necessarily mean you have prior trademark rights or ultimate exclusivity of rights to your trademark.  If you find yourself needing trademark advice with respect to trademark searches, trademark registration or a trademark dispute (especially one involving common law priority issues), you can contact a trademark attorney for assistance.

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