Federal Trademark Registration
Registering your trademark, even if you have established strong common law rights to the mark, is always advised. This allows you to provide notice to the world that you are using the mark, and affords you certain statutory rights and protections as well.
Generally, in order to file for a registration with the U.S. Patent & Trademark Office (USPTO), the trademark’s owner first must use or plan to use the mark in “interstate commerce.” This means the mark is used on a product or service that crosses state lines or that affects commerce crossing such lines (for example, an Internet business that caters to interstate or international customers).
Your potential registration also needs to clear certain hurdles, including:
- Whether there is a likelihood of confusion between your trademark and one that has already been registered
- Whether your trademark is inherently distinctive (for example, you cannot trademark “banana” if you plan to use the mark to sell bananas – it is a “generic” term)
- Whether your trademark includes immoral or scandalous matters, or is deceptive, or uses the name or portrait of a living individual without his consent
- And more!
Trademarks and the Internet
Having a federal trademark registration (as opposed to common law trademark rights or a state registration) is becoming invaluable in the world of e-commerce, online marketing, and domain name disputes.
For example, Amazon’s Brand Registry system requires you to have “an active registered trademark for your brand that appears on your products or packaging.” For those in the U.S., this means a registration with the USPTO. Without such protection, you may be at a high risk for counterfeits of your products or other seller’s being able to impersonate your presence on the site!
The U.S. has a two-tiered system of trademark protection: federal and state. A federal registration issued by the U.S. Patent & Trademark Office (USPTO) gives the registrant rights through the entire United States. A state registration will grant rights within that state’s boundaries only.
Each state has their own system of trademark management. Some states do not have a registration system at all; some only have a “notice” process – once you have establish your common law trademark rights within state boundaries, you can file a form to let people know.
If you are interested in state trademark issues, it is advised to research the particular laws, regulations and case law in every single state!
If you have questions about trademark law, how to register your trademark with the U.S. Patent and Trademark Office, need guidance on how to transfer your trademark or on general branding strategies, or what to do if you think someone is violating your trademark rights, contact our Intellectual Property team today.