What about common law trademarks?  If the name of a store isn’t registered as a trademark, does that mean that anyone can use it? 

Not necessarily; it depends on where it’s being used. But if you don’t register your trademark with the USPTO, you may have to litigate over rights to your trademark.  Every trademark owner, whether the trademark is registered or not, has “common law” trademark rights in the geographic area where they are using their trademark. This means that although the mark may not be registered by at the United States Patent and Trademark Office, the trademark may nonetheless enjoy nationwide rights if the mark is being used nationwide.  So if that’s true, why do we bother to register a trademark, if I can get nationwide rights just by using it? There are a number of reasons. 

First, if your trademark is not listed in the USPTO database, the trademark examiner won’t know about your trademark rights, and may issue a trademark for a mark that is the same or similar to yours. Now you’ll have to fight over the trademark with the trademark registrant and try to get their trademark cancelled, which is expensive and time-consuming. Expect to spend tens of thousands of dollars and about two years litigating the issue. 

Second, a trademark gives you nationwide trademark rights the moment the registration issues. It may take you years to expand your use nationwide, and until you do, your trademark is vulnerable to a competing registration. 

Third, your trademark gives you certain legal presumptions, such as the presumption that you were using the trademark at least as early as the date of first use listed on the registration, the presumption that you have the best rights to the trademark, and the presumption that you are using it on all the goods listed in the trademark application. This means that you don’t have to prove all of these in court in the event of litigation.

Trademarks that are not registered are called common law trademarks, and every trademark owner has common law trademark rights and you can get rights for the mark nationwide by using the mark in interstate commerce and registering that with the US Patent and Trademark Office. So if the mark that you’re using as a trademark for your restaurant or your store isn’t registered with the Trademark Office, the problem is that the trademark examiner may issue a mark that is confusingly similar to yours because they don’t know about your trademark. It’s not In the database for them to find.

Let’s say for example that you are running a shop in California and you’re also running a branch in Oregon. You have two shops, one in Portland and one in San Francisco, but you haven’t registered the trademark. So the trademark examiner gets a trademark application. They look at the application. They look at the trademark database. They don’t go out into the world and see if someone else is using that brand. So if they don’t find your brand in the trademark database they are going to issue that trademark. Now you as the trademark owner in California and in Oregon are in the unenviable position of having to defend your trademark rights without the benefit of having a trademark registration.

A trademark registration gives you a number of presumptions. One presumption is that you are the true owner of the trademark. But what if an infringer, who was unaware of your use, registers the trademark, even one you’ve been using for years? Now you’re stuck arguing with your trademark registrant and these sorts of arguments can go on for a long time — for years– and they can be very expensive. Plan to spend tens of thousands of dollars and a few years on this question of who was using the mark first if your trademark registrant/opponent wants to be stubborn about it. You can spend a lot of time arguing about this. This is why it’s much cheaper just to go get a trademark registration if you’re using the mark in interstate commerce.

The second thing that you get the moment you get the trademark registration is that you get nationwide rights. So your nationwide rights mean that you have the right to shut down any infringers nationwide and not just nationwide, but including United States territories, so in the Marianas, Guam, the U.S. Virgin Islands, and Puerto Rico. You have rights in all states and territories. So that is a powerful weapon to use against an infringer. If you don’t have a registered trademark, then all you can say is, “Hey, I was using that first,” but you have no way to prove it, because you don’t have a trademark registration.

Remember, it’s cheaper to register your trademark than it is to fight over the rights later, so for goodness’ sake, just register your trademark!  It is much cheaper and much easier and much less stressful than trying to prove to some naughty infringer that no, you’re actually the first user and you have the better rights than they do.

I’m Angela Langlotz, trademark and copyright attorney and I go live here on weekdays to answer your trademark and copyright law questions. If you have those drop them into the comments below this video. I’ll answer them on a future live. Don’t forget to like and subscribe to my YouTube channel so that you get all my newest information.

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Contact Dallas, Texas trademark attorney Angela Langlotz today to get started on a trademark application for your valuable brand.