The Trademark Is Not Registered, Can I Use it? No.


Trademarks are not established by registration. They are created by use. Clients often conduct a quick United States Patent and Trademark Office ("USPTO") trademark database search to rightly determine that the word, phrase or logo of interest has not been registered as a federal trademark. After thousands of dollars are spent, the dreaded cease and desist letter arrives informing the new trademark owner that the unregistered mark has been in use by another in the same field. The prior user has superior rights in the trademark, despite the lack of registration. Why? Common law trademark rights are established by use, not registration.

Federal trademark registration provides many advantages for those who secure them. Benefits of federal trademark registration include the following:

1) Being listed on the USPTO website for all to see

2) Being known to USPTO trademark examiners

3) Establishes nationwide use

4) Serves as evidence of the validity and exclusive ownership of the mark for the goods and services listed in the registration

5) Incontestable trademark status after five years

6) Grants the right to use the ® symbol

7) Grants the right to sue in federal court and, possibly triple damages and attorney fees

8) No need to prove actual damages

9) Provides a basis for foreign registrations

10) Empowers US Customs and Border Protection can block infringing imports

However, registration is not what gives the trademark ownership rights. Common law trademark rights are established upon use. So long as the trademark is being used as a trademark (to designate the source of goods, and not to describe the thing itself), a trademark owner does have common law trademark rights, including the power to prevent others from using the trademark in the same geographic area where the mark is used.

These rights are not as strong as those granted with a federal trademark registration. However, common law trademark rights are significant enough to warrant attention. You don't want to invest in a mark that can't be used in specific geographic regions. And, in the age of the internet, the "geographic region" may be the entire viewing public's region.

For all of these reasons, it's essential for anyone who is working on branding a product or service using a trademark to have a trademark clearance search conducted before the product or service hits the market. If you are interested in a flat fee trademark search, please contact us.

Ahaji Amos, PLLC

More Than Your Average IP Boutique

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