Federal Trademark Registration Vs Common Law

Federal Trademark Registration Vs Widespread Legislation

It is a query that I’m typically requested, it goes one thing like this… Firm A contacts me and needs to make use of a selected mark for its line of merchandise, nonetheless, it did a Google search and located that Firm B was at the moment utilizing the similar mark for the same product(s). We carry out a trademark search and study that Firm B has not registered the mark so, Firm B’s use relies on widespread legislation. The query then from Firm A is that if Firm A strikes ahead and registers the mark, will it have superior rights over Firm B. Mentioned one other method, does a mark that’s registered have superior rights over a mark that depends on widespread legislation.Reply: No… and sure.Let’s go a bit additional with the information: We study that Firm B began utilizing its mark about 2 years in the past, however once more by no means filed for federal trademark registration. We additionally study that whereas Firm B has a web site that shows its widespread legislation mark, it at the moment focuses its advertising and marketing efforts in three (3) states, Indiana, Illinois and Kentucky.With these information, Firm B could have senior trademark rights over Firm A in these states it does enterprise in, even when Firm A registers the mark with the USA Trademark Workplace. These senior rights being primarily based on the straightforward proven fact that Firm B started utilizing the mark in these three states earlier than Firm A.Utilizing the mark in commerce and never submitting for a trademark registration ends in seniority, nonetheless once more, when counting on widespread legislation rights, seniority is restricted to states you’re actively doing enterprise in. So below our information, if Firm A elects to go ahead with making use of for a trademark registration, and is profitable, Firm B should have seniority in these states it’s at the moment doing enterprise in, Indiana, Illinois and Kentucky, however Firm A, due to its federal registration, would be capable of declare seniority within the remaining 47 states. Ought to Firm B later wish to develop its market right into a fourth state, Firm A, with its federal trademark registration may successfully forestall Firm B from doing so.As I discussed earlier, I’m requested this query, or one thing comparable typically, and to some, the reply causes some confusion. Keep in mind, counting on widespread legislation rights solely protects you in these states the place you’ll be able to actively present advertising and marketing efforts, whereas a federal trademark registration protects you in all 50 states. Had Firm B pursued federal trademark registration when it first began utilizing the mark a pair years again, it might have then established seniority in all 50 states regardless that it was solely actively advertising and marketing in three states. It may due to this fact develop its advertising and marketing efforts in extra states when it was prepared, because it had established seniority with its federal registration. Additionally, with federal trademark registration, Firm B would have given the world (together with Firm A) discover that it had senior rights to the mark in all 50 states. And possibly most essential to Firm B, had it registered its mark versus counting on its widespread legislation rights it might not later need to cope with a Firm A coming into {the marketplace} with an similar mark and probably registering the mark, thereby limiting Firm B’s future use.Briefly, federal trademark registration has its benefits.