Federal Registration of Trademarks to Protect Intellectual Property

Contact: Sean Detweiler, Morse Barnes-Brown Pendleton
Posted Apr 1, 2019

Advantages over common law trademark rights include instant nationwide protection, effective notice to competitors, and ease of assigning, licensing, and defending.

Unlike with patents, there are common law legal protections with trademarks whether or not a mark is registered with the Trademark Office. In the United States, common law trademark rights automatically take effect upon actual use of the trademark in association with particular goods or services in commerce. As such, the question often arises, “why bother federally registering trademarks if common law rights already exist through actual use?” Common law trademark rights occur under state law. Therefore, such protections are only in place in the specific states in which the mark is commercially used in association with the goods or services. In states where there is no commercial use, there are no legal protections (and therefore competitors in those states are free to use the same or similar mark on the same or similar goods). In contrast, if a federal trademark registration is obtained, legal protections are automatically created across the entire United States, whether or not the mark is actively in use in each and every state.

U.S. Trademark Requirements

Commercial use of a trademark requires actual sales or transactions of goods or services with consumers in arm’s length transactions in interstate commerce in a manner that demonstrates the trademark in conjunction with the goods or services. Mere advertisement of a product or service does not qualify as commercial use in the U.S. To be eligible for federal trademark registration in the U.S., the commercial use must be in interstate commerce, meaning the sale or transaction must be with a consumer from a different state than where the business and the goods or services originate. If sales or transactions with consumers are only in the same state as the business and source of goods, then pursuing a state trademark registration should be considered, instead of a federal trademark registration. Sales or transactions internationally, outside of the U.S., also qualify the mark for federal trademark registration.

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