FREQUENTLY ASKED QUESTIONS ABOUT TRADEMARKS (VOLUME 2)
In our previous article, we reviewed the top three questions about Trademarks and Trademark Law that we typically hear from new clients. For clients who have some familiarity with trademarks, other questions come up quite regularly. In this article, we will address the three most common questions we hear from these clients, and important considerations for moving forward with your registration.
Question 1: What Is The Benefit Of Registering My Trademark With The USPTO?
A federal registration with the United States Patent & Trademark Office (PTO) brings many legal benefits, but also includes the following:
The right to stop third parties from unauthorized use of your mark or a mark that is confusingly similar
The right to keep third parties from using your mark to sell their products and services
The ability to register your mark with online retailers such as Amazon® to prevent other businesses from using your mark to identify their goods
The ability to register your mark with online search engines such as Bing®, Yahoo®, and Google® to prevent other businesses from using your mark to advertise their goods and services
Some clients come to us with a trademark registration at the state level. While this does offer some protection for your mark, the scope of that protection is limited to the state of registration. In today’s interconnected world, it is often more prudent for the future of the business and brand to plan for possible expansion by securing a federal registration.
Question 2: What Are The Potential Costs If I Don’t Register My Mark?
Registering a trademark is an investment, but failing to protect your brand can cause much more significant costs further down the road. Third parties may adopt your mark, or a mark similar to it, and cause problems for your business. Customers unhappy with your competitor will mistakenly believe it is your business that’s at fault. As we all know from the Internet, nothing travels faster than a bad review.
Without a registration, stopping this competitor will be very costly, in terms of money, lost business, and time. In the meantime, damage to your brand continues daily. Sadly, for some companies, failure to protect a brand has led to the end of the business.
A federal registration will also allow you to expand your brand without the worry of receiving a cease and desist letter from some other company. There’s nothing worse than building your business only to find that you’ve reached a limit, and you need to rebrand.
Question 3: What Are Common Law Rights?
First, it’s important to understand what these rights are. Common law rights are those rights that attach to your trademark through use. These rights include the right to stop third parties from using your mark or a “confusingly similar” mark without authorization. Confusion arises when consumers mistakenly believe that goods or services come from the same source.
Common law rights help to protect your brand, but not to the extent that a federal registration will. These rights generally apply only to the exact mark for only those goods and services you provide, and only in the geographic area in which you use your mark.
For example, a local pizza restaurant that operates under the name “Asiago” may have rights in its name and brand for pizza and only in that particular town and its immediate surroundings. Thus, it can stop another pizza restaurant from using the name in the immediate geographic area; however, a hair salon in the same town or a restaurant 30 miles away may be able to use the same or a similar name without being an infringement. If the local pizza restaurant wants to franchise into multiple locations, the common law rights will not be enough to protect the brand for that use.
Ready For The Next Step?
These are some of the most common questions we see, but we know you may have more. If you’re ready to register your mark, please feel free to reach out. But if you still have questions, we are happy to answer them. With over 20 years of experience in the trademark field, we can help you with any of your trademark questions, just ask.
Diane Chubb - Managing Partner, Trademarks & Copyrights