Many people assume that once they’ve been granted a US trademark registration by the United States Patent and Trademark Office (USPTO), they can never be sued for trademark infringement. They think of a US trademark registration as an impenetrable shield that allows them to do whatever they want with their trademark and not suffer any consequences. The reality is that owning a trademark registration doesn’t guarantee that you have the right to use your trademark under all circumstances. Sadly, some individuals learn this lesson the hard way when they’re served with a trademark infringement lawsuit at their home or business. My goal is to help make sure that this unfortunate situation doesn’t happen to you.
Who Was First?
In the United States, trademark law is all about priority. Generally speaking, if you were using your trademark first in a particular geographic area, then even an owner of a US trademark registration can’t stop you from continuing to use your trademark in that particular area. This is true no matter how old it is or whether it has become incontestable. You have every right to prevent the owner of the trademark registration from advertising and selling its products or services in your territory. If the owner of the trademark registration ignores your common law trademark rights, you can file a lawsuit for trademark infringement.
As you can see, trademark law has the potential to create a very strange situation in which the owner of a US trademark registration would actually be prohibited from using its registered trademark throughout the entire United States if you could show that you were using your unregistered trademark nationwide before the owner of the registration applied to register its mark.
Who Owns Trademark Rights and Where?
The bottom line is that while ownership of a US trademark registration provides many important benefits and protections, it doesn’t necessarily establish who has the exclusive right to use a particular trademark in a particular region of the United States. Prior users of trademarks have significant legal protections under US trademark law and can prevent owners of trademark registrations from using their trademarks under certain circumstances. If you fail to respect those trademark rights, you’ll likely find yourself wishing that you did.
Questions About US Trademark Registration and Infringement?
I’m US trademark attorney Morris Turek. If you have any questions about the scope of your trademark rights, or maybe need to discuss a possible trademark infringement with a knowledgeable and experienced trademark attorney, please don’t hesitate to give me a call at (314) 749-4059 for your no-cost consultation. You can also reach me by completing the contact form on this page or via email at firstname.lastname@example.org. I look forward to hearing from you soon.