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

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Can I Use an Unregistered Trademark Since NoOne Owns 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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Ahaji Amos is patent and trademark attorney with 17 years of experience in intellectual property litigation and prosecution at Ahaji Amos, PLLC, a law firm that represents startup and small businesses in all matters including patent prosecution, trademark prosecution, copyrights, trade secrets, oppositions, cancelations, equity funding and commercial litigation. Ahaji Amos, PLLC is dedicated to representing entrepreneurs, inventors, and innovators.  

This article is for information and advertising purposes and does not constitute legal advice.  No attorney-client relationship is formed in the absence of a fully written and executed engagement agreement between Ahaji Amos, PLLC and its clients.  Ahaji Amos can be reached at ahaji@ahajiamos.com.  More information can be found at https://ahajiamos.com.

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Ahaji Amos, PLLC

Don't Apply for a Trademark If...

1.  You Ignore Infringement.  

Trademark owners have an affirmative duty to police their marks.  When a trademark owner fails to do so, trademark rights are lost, even if the trademark owner has obtained a federal trademark registration.  Would be infringers use this defense when a trademark owner sends a cease and desist but fails to follow through with litigation threats stated in the letter.  The cease and desist shows knowledge of the infringement and lack of action, which indicates an acquiescence, or assurance to the infringer that the trademark owner will not assert its trademark rights against them.

2.  You Don't Act Quickly.

Trademark owners must ensure that there are no uses of their trademark by others that might be likely to confuse consumers as to the source of the goods or services bearing the trademark.  Trademark owners who are aware of infringing uses and delay taking action against those infringers fail at their duty to police and lose the ability to go after any infringer.  What's worse for many trademark owners is that the obligation to police is so powerful, that an infringer need not prove actual knowledge of its infringing use by the trademark owner.  An infringing trademark use is protected if the potential infringer can show that the trademark owner should have known of the infringing trademark use. Actual knowledge need not be shown. (Obviously, there are exceptions to this, and every rule.)

3.  You Aren't Using It.  

Usage, not registration establishes trademark rights.  (In many cases, rights exist without a federal registration, but enforcement is impossible without it.)  If you register a trademark then stop using it, you lose it.  It's just that simple.  If another entity comes along and starts using the trademark and you seek to prevent them, abandonment is a valid defense.  Token usage does not count.  Most courts deem three years of non-use as abandonment, but there is no set period.  The courts will look at the state of the mark's goodwill and the owner's intent to determine if a lapse in use is enough to constitute abandonment and loss of the owner's trademark rights.

4.  You Don't Control Licensees.  

When a trademark owner licenses use of its mark through licensing deals, franchising agreements, and the like, there is still a duty to exercise control of the mark.  The trademark owner must control the nature and quality of the goods or services sold under the mark.  Licensing agreements must specify the measures to be taken by the trademark owner, even after the license is executed.  I see lots of armchair trademark attorneys drafting trademark licenses that fail to discuss the owner's continued control over the mark within the license agreement.  These license agreements are "naked licenses," which often result in a complete loss of the trademark owner's trademark rights in the licensed mark, which will bar any equitable relief for the trademark owner in the event of a breach of that license.

5.  You Lied When you Applied.  

If you lied to the USPTO during your trademark application process, your federal registration is invalid.  If you sue someone for infringing the mark, all good attorneys will review the prosecution history and seek cancelation of the mark for fraud if any false statement was made.  The applicant will also be barred from reapplying for a federal registration on the mark.

6.  The Name of the Good has Become the Trademark. 

A trademark is a distinctive word, phrase, smell, sound, image, or the like that indicates the origin of the good.  If a copy is a Xerox, then xerox is not a trademark, the holder of a federal registration does not own it and can't stop others from using it.  There are ways to try to get it back, but it's best to have a solid plan in place so that a trademark doesn't become generic in the first place.

Ahaji Amos, PLLC represents entrepreneurs and small businesses in all matters, including trademark prosecution, litigation, and post-issuance matters, including oppositions and cancelation proceedings.  She may be reached by visiting www.ahajiamos.com or ahaji@ahajiamos.com.

This blog post is not meant to provide legal advice.  Readers should seek independent legal counsel regarding answers to legal questions.  No attorney-client relationship is established between Ahaji Amos, PLLC and the reader of this post, or any other content on this website.  An attorney-client relationship is only established upon the execution of an engagement letter between Ahaji Amos, PLLC and its client.