ORIGINALLY POSTED JUNE 12, 2005 BY KURT P. LEYENDECKER
And here it is… The newest installment in what was intended as a three part post but is threatening to become a book! I hope not!
Having covered protecting patents in Part II, we will consider protecting Trademarks in this entry.
Unlike patents, the Federal government does not grant you a trademark (or for that matter a copyright). Rather, they merely register the trademark or copyright putting everyone else in the nation on notice of your mark. The only way to obtain trademark rights is to actually use the mark in commerce. That is, to sell good or services that are identified by the mark. And if you stop selling the goods or services associated with a mark, you lose the mark.
So if you automatically gain rights to a mark the minute you start using it in commerce (assuming of course that no one else has senior rights to the mark over you), why register the trademark Federally? Well, there are several advantages of Federal registration: (1) you gain nationwide scope in terms of your exclusive right to sell your goods under the registered trademark; (2) you can make your intent to use the mark in the future for a particular class of goods or services known prior to ever using the mark thereby pre-emptying others from using the mark in commerce before you; and (3) you gain access to the Federal courts to enjoin or sue someone who is infringing your mark. I will write about the first two advantages.
Nationwide Scope of Protection:
With Federal Registration, you can prevent others from gaining use rights to your mark anywhere in the United States in a field of use similar to yours even if they have no knowledge of your prior use. Without Federal Registration, your protection is limited to the geographic area in which you operate.
So, for example, if you have a restaurant chain with restaurant locations in Colorado and Wyoming, you can only prevent others in that state from using your restaurants name. But with Federal Registration of the name as a service mark, you can prevent anyone nationwide from using the name, and that may come in handy if you want to expand the scope of your business.
Intent To Use Registration:
Normally, trademarks rights only accrue when the mark is used in commerce. If one had to rely on actual use, he/she might spend substantial sums of time and money preparing to launch a product only to find out at the last minute that someone beat him/her to the punch and started to use the mark first. Depending on the size of a product or service rollout, the cost could be staggering and difficult to recover from.
Fortunately, the Federal government allows one to file an application for a mark they intend to use in the near future, and with the filing accrue senior user rights over anyone who starts to use a similar mark thereafter. Accordingly, you can be more assured that your marketing and rollout budget will not be in vain.
Now, for less important trademarks, many opt not to Federally register them. Nonetheless, they are protected under common law in the geographic area of use. The key when dealing with secondary marks is to always acknowledge them as your mark by putting a superscript SM (for service mark) or TM (for trademark) when they are used.
Part IV of this series is next and finally we will be discussing the final topic: Leveraging you intellectual assets. Unfortunately, if the next installment takes me as long as the time between the second and third installments, you might have to wait a little while. Lets hope this is not the case.
