LEVELS OF TRADEMARK PROTECTION

By: Kerry Kolvet, Esq. and Bonnie Drinkwater, Esq.

A trademark is a word, symbol or phrase used to identify a company or individual’s products or services and to distinguish them from the products or services of another. There are different levels of trademark protection, and rights can be acquired in one of three ways: (1) common law trademark rights, which require that the user be the first to use the mark in commerce; (2) state trademark rights, which require registration with a specific state; and (3) federal trademark rights, which require registration with the U.S. Patent & Trademark Office.

Common Law Trademark Rights

This is the lowest level of protection and simply requires the use of your trademark in commerce. Once a business uses a trademark in connection with its goods or services, the business acquires priority to use that mark in connection with those specific goods and services assuming no other trademark owner has superior rights. However, the priority to use that mark is limited to the geographic area the mark is actually used in and a limited zone of expansion. This right would provide the business the right to stop any infringing use of the mark within the business’ geographic area, but would not give the business the right to stop someone from using the trademark anywhere else and also would not prevent someone else from filing a federal registration for that same mark, effectively limiting the first users’ expansion into any new areas.

State Trademark Rights

The second way to obtain protection is to file for a trademark registration within the state in which the business is using the mark. This registration would provide protection only within the state of registration assuming no other trademark owner has superior rights. This registration would not limit another business’ ability to obtain a federal registration, again, effectively limiting the ability to expand into new markets outside of the state of registration.

Federal Trademark Rights

This is the highest level of protection for trademarks in the United States. These rights require registration with the U.S. Patent & Trademark Office. Once registered, the business would have the right to use the mark nationwide, except to the extent that the mark is utilized by a third party with previously established rights. In addition to the right to use the mark nationwide, federal registration provides several other benefits, including: (i) the right to bring an infringement lawsuit in federal court; (ii) the mark becoming “incontestable” after five years of use after registration; and (iii) potential recovery of treble damages, attorneys’ fees and other remedies for infringement.

There is no way to fully protect a business’ trademark and its future expansion without obtaining a federal trademark registration. Businesses that rely on common law rights often find that the expansion into other geographic areas is limited by later in time trademark use and/or registrations. Registering your trademark federally ensures that all the costs and expense of building a business’ trademark is not wasted and helps you to build a valuable asset for your business.