What is a trademark?


Trademark rights come from the commercial use of a name for goods and services. A trademark user does not have to apply for trademark registration in order to develop or enforce those rights, but federal trademark registration is all but essential in today’s nationwide and even global marketplace. The process for obtaining federal registration begins with an application for registration.

Establishing trademark rights

Trademark rights begin with the use of a name in commerce. Federal Registrations of these trademarks uses enhance and supplement the rights that come from using the mark. Further, the process for registration may begin before the mark is being used in commerce, allowing mark holders to secure their rights before using the mark.

Common law rights

Common law rights come from the use of a mark in commerce in connection with goods and services. Common law rights can allow a mark user to claim exclusivity to their use of the mark, but this exclusivity only extends to the geographic area where the user conducted business and the geographic area where the user’s goodwill extended.

The limited nature of common law rights makes them an imperfect solution in today’s marketplace, especially because of the possibility that more than one user will develop rights for an identical mark in different geographic areas.

Federal registrations

Federal trademark registration can confer additional benefits and rights on a trademark holder over the rights the holder may claim at common law. Registration requires filing an application to register the mark with the USPTO.

The USPTO maintains two trademark registers – the Principal Register and the Supplemental Register.

Registration on the Principal Register conveys the presumption of nationwide exclusivity on the mark holder and the presumption that the registrant of the mark is the owner. It also has the following benefits:

  • the ability to bring an infringement action in federal court
  • nationwide constructive notice of use
  • the ability to record the mark with U.S. Customs and Border Protection to stop the importation into the United States of infringing or counterfeit goods.
  • the ability to use the federal registration symbol ( ® )
  • the possibility of receiving statutory trademark remedies
  • the use of the U.S. Registration as a basis for filing foreign trademarks; and
  • policing of the mark on the Federal Register.

A final benefit of Federal Registration is that it allows a trademark user to establish rights to a mark before the mark is being used in commerce. Potential trademark users may file an intent-to-use application and later show that the mark is being used in commerce. If the mark ultimately registers, the trademark holder may claim rights dating back to the filing date of their application for registration.

Registration on the Supplemental Register is reserved for descriptive marks, surnames, geographic terms and non-distinct trade dress. Registration on the Supplemental Register does not confer a presumption of exclusive rights, but it does provide policing of the mark on the Register, the ability to bring suits in federal court, and the ability to use the registration symbol.

Because it coveys a presumption of nationwide rights, a federal trademark registration is a solution to the limits of common law trademark rights. It allows trademark users to gain rights even in parts of the country where they have not conducted business. In doing so, registration prevents others from building legitimate rights in confusingly similar names.

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