Trademark Protection By Use or By Registration
Legal protection for a trademark can come about in two ways:
- By actual and legitimate use of the mark.
- By registration of the mark, at the federal level (with the U.S. Patent and Trademark Office) and/or at the state level (with the appropriate agency, such as the Secretary of State's office).
Trademark Protection by Use
You can establish rights in a trademark based on "legitimate use" of the mark. This protection arises automatically, from actual legitimate use of a mark for business or commercial purposes. Trademark rights that arise from use (rather than from registration) are sometimes referred to as "common law" trademark rights. Generally, the first to either use a mark in commerce or file an intent to use application with the U.S. Patent and Trademark Office has the ultimate right to use and registration. Disputes can arise if more than one person or business claims "common law" rights to a mark, so taking additional steps to protect your rights to a mark (such as registration) can be more effective than relying on "common law" rights only.
Trademark Protection by Registration
While trademark protection arises automatically from legitimate use of the mark, registering a trademark offers additional protections for the mark's owner. At the federal level, owning a federal trademark registration provides several advantages, including:
- constructive notice to the public of the registrant's claim of ownership of the mark;
- a legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
- the ability to bring an action concerning the mark in federal court;
- the use of the U.S registration as a basis to obtain registration in foreign countries; and
- the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.