A business can obtain trademark rights in two primary ways.
1. By applying for a federal trademark registration.
2. By establishing a common law trademark, through use in commerce.
The second method might seem easier and cheaper, but it doesn’t provide the business with the many benefits of federal trademark registration. The trademark application process does involve multiple steps, and often the assistance of a trademark attorney, but it provides the business with more definitive ownership of the mark.
Common law trademark
If a business uses a brand name on products it sells, it can acquire trademark rights under common law. State law governs these marks, which creates a set of issues separate from federal trademark rights.
First and foremost, a common law trademark is valid only in the geographical area in which it is being used in commerce. That is, a restaurant called Ray’s BBQ Pit operating in Dallas typically will hold common law trademark rights to that name. A competitor in nearby Fort Worth likely could not open a restaurant under the same name, or a name deemed confusingly similar.
However, if someone in North Carolina, unaware of the Dallas restaurant, opened up a restaurant called Ray’s BBQ Pit, the business in Dallas would likely have no trademark case. The North Carolina business could apply for and receive a federal trademark registration for Ray’s BBQ Pit, thereby giving it presumptive nationwide rights to use the mark.
The only limitation for the federally registered mark is entry into the home market for the common law mark. Depending on the extent of use of the common law trademark, this would restrict the North Carolina company from entering the Dallas area, and possibly other areas where the Dallas restaurant has promoted its restaurant services.
An interesting case involving Burger King illustrates this case. Before the famous fast food chain received its trademark in the early 1960s, an eatery in Mattoon, Illinois, called itself Burger King. Because it had only statewide, not nationwide, rights to the Burger King trademark, the franchise opened competing restaurants.
After the Mattoon Burger King sued for trademark infringement, a judge ruled that the national chain could not open a restaurant within 20 miles of the Mattoon location.
While this might seem favorable to the Mattoon Burger King, it also illustrates the potential perils of foregoing federal trademark registration.
Federal trademark application
The only way to establish federal trademark rights is to file an application with the United States Patent and Trademark Office (USPTO). Although this might sound simple enough, it is a complex process with many potential trappings along the way. One mistake can invalidate the entire application, denying you the rights to your trademark.
This first step in obtaining a federal trademark registration is to conduct a trademark search for the name, logo, or phrase you plan to trademark. Only through a comprehensive search can you determine if anyone else already owns the rights to your intended trademark. Applications for trademarks that already exist, or even similar to trademarks that already exist, are routinely rejected by the USPTO.
To continue the above example, let’s say you might want to trademark the name Ray’s BBQ Pit. If a search of the USPTO database contains a listing for Ray’s BBQ Restaurant, then your chances for approval will likely be very low, since the names bear many similarities. To repeat, names do not have to be identical for a trademark conflict to exist. The names need only be confusingly similar, meaning consumers are likely to be confused by the two names existing on separate entities.
The USPTO database is available for anyone to search, but searching it yourself can create a number of issues. Returning again to Rays’ BBQ Pit, if you typed that into the federal database you might think that the name is clear for your use. But if another company has indeed trademarked Ray’s BBQ Restaurant, your use of Ray’s BBQ Pit could constitute trademark infringement. Hiring a trademark attorney helps ensure that you check all possible iterations of your mark and avoid any chance of infringement.
Once you have settled on a name, logo or slogan that is free of any potential conflicts or infringement issues, you would then file your trademark application. The USPTO provides an online trademark application filing system that allows anyone to apply directly through the website. But again, there are enough potential pitfalls to warrant professional assistance.
Aspects of the trademark application include:
- Selecting an appropriate class of goods and services
- Providing an appropriate description
- Noting the basis for the application, “intent to use” or “current use”
- Including a “specimen of use,” if you are currently using the mark
Meticulous businesspeople can fill out an application, including all of these items, and still receive trademark rights. But because the USPTO can reject an application due to a minor technical error, employing an attorney can increase your chances of speedy approval. Rejection for technical reasons can severely delay the process and cost you a second filing fee.
Assuming you meet all the requirements for the filing, the Trademark Office should then approve your trademark application and issue your certificate of registration. Once you receive your certificate of registration from the Trademark Office, your name, logo or slogan would be officially trademarked, giving you exclusive nationwide rights to use that name, logo or slogan in business.
