Co-written by Will Montague, intellectual property attorney.
I have found that the more you know about something, the more you realize that you don’t know much. I was concerned that I was making assumptions. I reached out to my friend, Will Montague. He is an intellectual property attorney. We have worked together for several years. He has done a ton of cool stuff you can read about here. Will offered to coauthor this article to help his clients better understand the process and make more informed creative decisions.
We are starting with some of the basics. What is a trademark? How do you register a trademark? And, why bother?
Usually, when people refer to trademarking something, they’re thinking about registering a trademark with a governmental entity. In the US and a few other countries, that registration process mainly makes an official record of someone’s claim that something is a valid trademark. Registration doesn’t create any trademark rights by itself. If the United States Patent and Trademark Office (USPTO) approves the application and grants registration, it does strengthen existing trademark rights.
Trademark rights arise in the US and other “use-based” countries from correctly using a mark to promote products or services. Trademark rights exist automatically under the law. No registration is needed. These are called common law trademarks. They are as enforceable in court as a registered trademark. The geographic scope of protection is more limited. And the common law trademark holder has to jump through more hoops in court than if they had a registered trademark.
For instance, let’s say I started selling socks in a local store with my name Cozy Koala Socks. I will have a common law trademark for Cozy Koala when used with socks, at least in my local area. But someone else could start selling their own Cozy Koala Socks a few states over, and I couldn’t do anything about it. If I registered my trademark, though, my trademark rights would cover the entire United States.
The main reason to register a trademark with the USPTO is that it extends the geography of the trademark rights to the entire US. Common law trademarks only extend geographically to where the trademark owner can prove sufficient use to promote its products or services.
Another benefit is that if you sue someone for infringement of a common law mark, you have the burden in court of proving the mark is valid and that you are the correct owner of the trademark (as well as the geographic scope of protection). That is often a burden. If you sue for infringement of a registered mark, on the other hand, the court presumes that the mark is valid and is owned by the registrant. The burden is shifted from the outset to the defendant to disprove those things.
Finally, and this is a relatively new development, the social media platforms and ecommerce sites generally won’t do anything about an infringement claim if the mark is a common law mark. They require a registered mark. Amazon is a good example. To be part of the Amazon Brand Registry, which is the best way, and often only practical, way to get Amazon to remove knock-off products, you must have a registered mark. Facebook and other social media platforms don’t have a brand registry. But they normally won’t help you if you can’t show that your trademark is registered. You can always sue someone in court for infringement on Amazon, Facebook, etc. But, that’s more costly and time-consuming than filing a quick infringement report and having the infringing mark taken down.
The first step for registering a trademark is to submit an application to the USPTO. The USPTO vets an application as best it can to make sure that:
+ it qualifies as an appropriate mark for the identified product or service.
+ it doesn’t conflict with some existing registration or application in the USPTO database for a confusingly similar mark.
+ the applicant has actually “used” the mark in a qualifying manner.
However, just because the USPTO approves a name by issuing a registration certificate doesn’t mean someone else won’t challenge the trademark. The USPTO makes its best determination from very limited records whether it appears appropriate to “register” (officially record) the mark in its database as being a valid trademark. Because the USPTO looks at such a limited record, a registered trademark can be challenged and canceled in court if it turns out that the USPTO should never have registered the mark.
So, now we know that if you are using a name, you are already engaged in trademarking it even if you haven’t registered the name. You know the steps you could go through to register your mark. And, you know the reasons why you might want to. The next article will help you understand which sorts of names make for stronger or weaker trademarks.