Filing for trademark protection with the USPTO04.18.18
If you read last week’s entry, then you have a better understanding of what a trademark is, and how trademarks are evaluated for their “strength.” Assuming, then, that a business owner has a trademark that is distinctive of the underlying goods or services, a good next step is to obtain protection for that mark.
Protection ensures that the trademark owner can prevent others from using the same mark to identify similar goods in commerce. Trademark law seeks to protect consumers from being confused as to the source of the goods or services offered for sale, this is one reason that trademark law disfavors two companies selling similar goods or services, using the same name. Only one Nike is allowed for shoes, for example. Consumers need to be able to rely on the brand name as an indicator of source and quality, and in this way, consumers can count on their prior experiences in selecting brands, and thus they can make meaningful purchase choices.
So how does a trademark owner obtain protection for his/her mark?
At common law, protection for a mark begins with use in commerce. In a straightforward analysis, “use in commerce” can be determined by the day on which a business owner sells its first product, under the trademark name, to a consumer. (The “use” analysis isn’t quite this simple, and there are a few other ways of determining use, but generally, the preceding sentence conveys the basic idea.)
So, for example, back to the soap owner from last week’s blog post, who is selling her soap products under the mark, FLUBO … she will be able to claim a date of first use on the day in which she sells her first bar of FLUBO soap to a customer.
At common law, the business owner will receive exclusive rights to sell his/her products or services under the trademark in the geographic region in which he/she is selling those products or services.
If the sales occur within a certain county in a certain state, then the trademark rights begin to accrue there. If the business owner expands his/her operations to go statewide, then common law rights will follow and provide exclusivity to the brand in association with the underlying goods/services. If the business owner expands beyond his/her initial state borders and begins selling those goods/services in additional states, the common law rights will continue to follow and serve to expand the zone of protection afforded to the business owner’s trademark. So, for example, if FLUBO is sold in four states, then the business owner will likely* have exclusive trademark rights to sell soap products under the FLUBO name, and thus, no other business can use FLUBO to sell soap products.
Under federal law, these same common law principles of “use” apply. That said, with passage of the Lanham Act, a trademark owner who is only using his/her mark in one geographic region can expand his/her rights to include the entire United States by filing for and receiving a federal trademark registration from the U.S. Patent and Trademark Office (“USPTO”). If a business owner begins using a mark in commerce, he/she can file a Section 1(a) application, asserting the mark is “in use” and providing evidence of such use. If granted, the business owner’s mark will receive nationwide priority to use the mark in commerce for the associated goods/services.
Additionally, under the Lanham Act, a business owner can apply for protection for a mark that is not yet in use in commerce. This is known as a Section 1(b) trademark application, “intent to use,” and it allows that a business owner can file an application for a mark with the USPTO, alleging a bona fide intention to use the trademark in commerce in the near future (i.e., practically speaking, within about three (3) years from the time the application has been approved by the USPTO). A singular advantage of this type of trademark application is that the applicant will receive the benefit of the filing date as the date of “constructive use” for determining nationwide priority to the trademark (as opposed to the date of the mark’s actual first use in commerce). Note that an “intent to use” trademark, even if approved by the USPTO, will not mature into a trademark registration until the applicant files (and receives approval for) a Statement of Use with the USPTO.
So, that’s a snapshot of how a trademark owner receives the exclusive right to use the mark in commerce for the associated goods/services. The analysis can get more complicated, but the above provides the basic principles to consider when thinking about trademark rights.
* I’ve used the word “likely,” because this blog article assumes that our business owner is the first to use FLUBO. For discussions regarding the use of the same term by multiple parties, stay tuned for our next article on priority.