In Today’s Issue, we answer the question – What is the difference between the “right to use” a trademark and the “right to register” a trademark? While these rights are inextricably linked, they are different.
The United States and Patent Trademark Office (USPTO) defines a trademark “as a word, phase, symbol, or design, or combination thereof” used to identify and distinguish a company’s goods. A service mark is essentially the same thing but pertains to services rather than goods. We use the word “trademark” interchangeably for both trademarks and service marks.
A trademark can be protected on the basis of either use or registration depending on the Country where protection is sought. Nearly all countries all over the world today provide a Trademark Registry and full trademark protection is properly secured only by registration. In the United States, where trademark protection is based upon use, the registration of a trademark merely confirms the trademark rights that have been acquired by use. Consequently, in the United States, the first user has priority in a trademark dispute, not the one who first registered the trademark.
Right to Use
Trademark rights are acquired through use of the trademark in commerce to identify your goods/services. In other words, your trademark is legally protected through common law once it goes into commercial use. Using a trademark in commerce means to use the trademark in good faith in the ordinary course of trade and not merely to reserve a right in the trademark. Common-law rights may accrue through purely intrastate use (i.e. only within the state of New York), unlike rights protectable under federal law that require interstate use (i.e. across State lines or between the United States and a foreign country).
The first to use a trademark…in a particular geographic market, the senior user, acquires rights in the trademark in that market. However, while priority of use establishes priority of common law rights, the rights are geographically constrained. A common law trademark can only be enforced in the geographic area where the trademark is used. Common-law rights include “the right to prevent the subsequent use by another person of the same or similar name or trademark when the business or service for which the name or trademark is subsequently used is likely to cause confusion as to the origin of the business or the service.”
For example, if you sell a product only in Southern Florida, your common law trademark may prevent another business from selling the same type of product under a similar name in West Palm Beach, Florida. But you will not be able to prevent a competitor from doing business with your name in San Francisco, California. And if your competitor is the first to use the trademark in San Francisco, California, its common law trademark rights may prevent you from expanding into that market.
Common law rights exist independently of registration. The U.S. Trademark Act (or Lanham Act) does not create the right to a trademark. It only recognizes the rights acquired through use. If you were the first user, common law rights may preserve your right to use your trademark in your geographic area, even if another business gets a nationwide federal registration for the same trademark. However, common law trademark rights are difficult to enforce.
To summarize, the right to use a trademark hinges on whether you are the first user to use a particular trademark for particular goods/services in a specific geographic area – that geographic area could be local or nationwide depending on the nature of your goods/services but focuses on the first user and geographic area of use. Your rights of enforcement are limited to the geographic area where you have common law rights.
Right to Register
Instead of relying only on common law rights, a user of a trademark may apply for a federal trademark registration with the USPTO. A federal trademark application requires that one files a trademark application with the USPTO and have it approved. The USPTO decides whether or not you have the ability to register a trademark; the USPTO does not decide whether you have the right to use a trademark. Applying for a trademark registration can be a long and complex process but if successful, a registration gives you a legal presumption that you have the right to use the trademark nationwide and prevent others from using a similar trademark for similar goods/services.
Prompt registration is important because the USPTO will refuse to register a trademark that is likely to be confused with the trademark of a prior trademark applicant or a trademark registrant with similar trademarks for similar goods/services. A trademark owner has to be concerned both with prior trademark applicants/registrants and compliance with all of the statutory formalities prescribed by the Trademark Rules. For example, there are certain marks that are simply not registerable with the USPTO, e.g. trademarks that are generic at the time of filing are not registerable. BICYCLE would be generic for “bicycles” or “bicycle retail stores.” Other types of proposed trademarks that are not registerable include: (1) surnames (last names); (2) geographically descriptive marks; (3) foreign terms that translate to generic terms; (4) the titles of a single book or movie; and/or (5) matter that is used in a purely design/ornamental manner.
A federal registration has several advantages: (1) the filing date of the application is accepted as the date of first use in commerce (except for intent-to-use applications); (2) registration puts the public on notice that you are claiming ownership of the trademark; this means that the registrant has rights in the mark even in areas where it does not conduct business; (3) your federal registration will come up in USPTO searches conducted by the USPTO when reviewing trademark applications filed after yours; (4) the owner may use the ® when displaying its trademark on its goods, labels and/or advertisements to declare that the mark is federally registered; and the (5) the owner has the right to use in federal court for trademark infringement.
Takeaways
- The greatest difference between a common law (or unregistered) trademark and a federally registered trademark is the amount of protection available and the geographic reach of that protection.
- In our last newsletter, we discussed different search options available to you (by the way, you can find copies of our newsletters on our website blog). As a point of reference, a knockout search will typically only address whether you have the right to register a trademark since that search focuses on the USPTO trademark registry. A comprehensive or full search addresses the question of whether you have the right to use your potential trademark in commerce since its search encompasses not only trademarks are registered with the USPTO but also trademarks that are in use in commerce.
- Keep in mind that for Amazon Brand Registry, you cannot rely on common law rights alone.
- It must be remembered that registration has nothing to do with common law rights to a trademark. Thus even if a federal trademark application is refused by the USPTO, the user of the trademark may and should enforce his/her common law rights.
- The right to register looks at the USPTO database only; the right to use looks at the marketplace.
