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Do I Have Any Trademark Rights Even If I Never Registered the Name?


The short answer is MAYBE.

The United States, like many countries around the globe, but certainly not all, is a common law jurisdiction when it comes to trademark rights. This means that the right to use a given business name, product name, tagline, etc. stems from being the first to use that trademark within the geographic market area. We call this the scope of your market penetration and the scope of your market reputation. The difference between a common law right and a federal registration here is that a federal registrant becomes the presumptive owner of the trademark in all 50 states and US territories, so they can enforce rights much more broadly and have access to the federal court system as well as a number of other privileges and benefits. So, for example, if you started using the trademark in New York City ten years ago with no registration and you do almost all your business within the tristate market area including your advertising, marketing, branding, etc. even if another entity later acquires a federal registration and of course it was clear that there was a conflict, they could not frustrate your right to continue to use the mark in all the market areas you were already operating within. You may even have grounds to file either an opposition to their trademark application or a petition to cancel their trademark registration based on your common law rights assuming you can show that you were first to use the mark in commerce. This can usually be done within the first five years of their registration, but in most cases not beyond that because mark holders will file something called a Section 15 (Statement of Incontestability). Now if their federal registration came before you started using the mark in NYC, you then run the risk that they can force you out of that market area should they choose to start doing business there as well. Their federal registration serves as constructive notice that they have claimed rights across all the US.

This is one of the reasons why you should always conduct proper trademark clearance due diligence before you start investing in any trademark.

If you receive a Cease & Desist letter, or believe someone is infringing, you should always get some solid legal advice before taking any action on your own.

 

CONTACT US ANYTIME FOR A FREE PHONE CONSULT!

WHETHER YOUR BUSINESS IS NEW OR EXPANDING, OR YOU ARE LAUNCHING A NEW PRODUCT OR SERVICE, IT IS CRUCIAL THAT THE PROPER DUE DILIGENCE IS DONE BY A TRADEMARK LAW FIRM BEFORE YOU INVEST HARD-EARNED MONEY IN YOUR BRAND!

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