Establishing Trademark Rights

Establishing Trademark Rights

Trademark rights are established by either:

  1. actually using the trademark in commerce or
  2. filing a proper application to register a trademark with the U.S. Patent and Trademark Office (USPTO) and using the trademark in commerce within a prescribed amount of time

Registering with the USPTO is not necessary to establish trademark rights. However, registering your trademark can help secure benefits, such as an official notice of your claim to the mark, evidence of ownership, the ability to sue infringers in federal court, a basis for obtaining registration in foreign countries and preventing the importation of infringing foreign goods.

There are two types of rights in a trademark: (1) the right to register and (2) the right to use. Generally, the first party who uses a trademark in commerce has the ultimate right to register. The right of use can be more difficult to determine. This is especially true when two parties begin using a similar trademark without knowledge of each other and without registering the trademark. In this case, only a court can decide who has the right of use. Federal registration does provide a significant advantage in court proceedings over usage rights.

 

 
  • Trademark Statement of Use
    To register a trademark with the U.S. Patent and Trademark Office (USPTO), you must prove that you are actively using your trademark to sell goods or sell or advertise services. In other words, you cannot register a trademark simply to tie up the rights to it. You must actually use it in commerce...
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  • Requirements for Filing Statement of Use
    Along with your Statement of Use, you must provide to the USPTO: (1) a filing fee for each class of goods or services, and (2) a specimen showing use of the trademark for each class of goods or services that you originally selected. Your trademark can only be registered in those classes and those...
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  • A Word About Trademark Specimens
    A trademark specimen is a real-world example of how you are using your trademark on goods or in the offer of services. A specimen is more than just a picture of your trademark or logo. For goods (products), acceptable specimens include labels, tags, packaging material, instruction manuals and...
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  • Time Frame for Filing a Trademark Statement of Use
    To complete the trademark registration process, you must file a Trademark Statement of Use within the following time period:
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  • Searching for Conflicting Trademarks
    While you are not required to search for conflicting trademarks, it is highly recommended. Should there be any existing trademarks already federally registered that conflict with yours, your application can be denied and your filing fees would not be refundable. Additionally, since trademarks can...
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  • Legal Requirements for Registering Your Trademark
    There are four basic requirements for filing a trademark (or service mark) with the U.S. Patent and Trademark Office (USPTO). The trademark must be applied for under the actual owner's name. The owner of the trademark is the person who controls the nature and the quality of the goods sold or the...
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