I already registered my name with the State. Isn’t that enough?
Many people think that registering your business with the state gives you the exclusive right to your business name or slogan. This is not true.
State registration is a tax matter. The state wants to keep track of who is doing business in the state so it can collect taxes. The state registries do not communicate with each other or with the federal trademark office. Therefore, someone can register a business in another state with your name.
So, why should you register your trademark?
You should do it:
- to protect your brand nationwide
- to have exclusive use to your mark (your name, logo, slogan, etc.)
- so you can legally prevent others from using your mark
- so you don’t lose the right to your name because someone else registered it
- because you get to use the fancy ® symbol after your mark
What are common law trademarks?
If you do not register your mark with the United States Patent and Trademark Office, you hold a common law trademark.
Common law trademarks are a form of property ownership you obtain by using your mark (name, logo, slogan, etc.) before you register it with the federal trademark office. To possess a common law trademark, you must use your mark in commerce (meaning, you must advertise and sell your product or services in more than one state).
Common law trademarks are unregistered trademarks. In the US, you do not have to register your trademark to acquire the property rights that go with a trademark. If you sell products or services, you automatically have a common law trademark in that brand in that particular market.
Federal trademark registration is the gold standard.
Verify you can use a mark before you start a business or launch a new product or service. If you don’t, you might later learn you cannot use the mark. You will lose a lot of time and money rebranding your business, product, or service. Besides, you will confuse your customers if you have to change your name.
First, search the national trademark registry for registered and unregistered marks.
This is a place where I recommend you spend the money on an attorney to verify your name rather than risk having to rebrand later. Your attorney will determine whether there is a likelihood of confusion between your mark and another’s mark. While you might think Epic Games is obviously different from Epik Games Company, the Trademark Office will disagree.
I recommend you register your trademark early in your business endeavor. You may be a small business now, but as you grow, you will want national protection for your mark. This is especially true for e-commerce businesses that theoretically operate in all 50 states.
Can someone challenge my trademark registration?
Yes. Even if you register, another business can cancel or limit your trademark based on “prior use”. The term “prior use” means this business used the same or confusingly similar name before you registered your name. You may have to change your name or you may be prohibited from using that name in a certain geography.
Also, competitors can challenge your trademark registration up to 5 years after it is registered. This is why you want to do a thorough trademark search. You want to be aware of possible registered and unregistered marks that may later demand you stop using your mark.
The Trademark Office isn’t perfect. Sometimes they allow registrations that they should not have. Someone may challenge your name within the five-year period.
Alternatively, by doing a trademark search, you might find that someone registered a trademark that you want to use. If you can demonstrate that you were using it first (you had a prior use), you may be to challenge the trademark registration.
Concerto Law helps businesses protect their brand.
So, trademark registration is the gold standard. If you are serious about protecting your brand on a national level, register your mark.
Concerto Law loves to help people protect the brands they have built. Contact us to schedule a consultation. Let’s protect your brand now before it is too late.