In this article, you can discover:
- How to use a trademark on similar goods without permission or infringement on a licensing deal.
- Why the USPTO tends to believe people when it comes to the first date they used the trademark.
- How your trademark must be on goods in use for it to be registered.
Can A Competitor Use Your Trademark In Commerce Without Committing Infringement?
You can get permission to use someone else’s trademark in certain circumstances. However, if they’re using it on similar or the same goods, then it’s the same trademark without permission or a licensing deal in place. Thus, they are infringing on it.
How Do You Prove The First Date Of Use For A Trademark As Part Of The Trademark Registration Process For The USPTO?
The USPTO tends to take people’s word as long as they have reasonable evidence, especially when the trademark registration is submitted by a trademark attorney who’s bound by the rules of ethics.
Proving the first date of use is a lot harder to do in court than it is as part of the registration process. First, you show the USPTO a specimen, then you sign an oath stating that the specimen demonstrates the way that the mark has been used in commerce since its first use.
Is It Advantageous To Register For A Trademark Before You Release It To The Public?
You cannot register your trademark before your goods are used in commerce. You can apply for registration and you can establish an intent to use the application in the books, but you won’t get any registration on the principal or supplemental registers before it is used in commerce.
Also, your trademark can’t be used in commerce where the public’s unaware of it…
No one disagrees that the public has to be exposed to the mark before it’s being used in commerce. Thus, it is advantageous to do a trademark search before you release your goods to the public. Having a search done before you send it out on advertising materials or packaging can save a lot of money. But at the end of the day, you can’t register a trademark until it’s being used.
Does A Mark Become Eligible For Registration As I Use Market Interstate Commerce Like Setting Up A Website?
Setting up a website with your trademark can mean it becomes eligible for federal trademark registration. However, trademark eligibility still rides on whether or not you’re offering the goods or services in commerce.
Your trademark is not necessarily eligible for federal registration if you have a website for your business and your mark is just sitting there on the front page. It is not enough to have a website with no description of the goods, no way to purchase the goods, and no actual commercial use associated with it. Your trademarked goods have to be in use.
As such, simply having a website for the business with your mark sitting there with nothing else doesn’t make that a use in commerce. It’s just a publication.
If I Successfully Register My Trademark On The Federal Register, Will I Gain Trademark Rights In All 50 States?
If you register your trademark on the federal register, you might gain trademark rights in all 50 states – but there are exceptions. Because of the internet age, trademarks are territorial in their history and their design.
For example, consider that you’re only using your mark in a certain geographic area, as the owner of a local restaurant. In this situation, it would be hard for you to justify why someone can’t open up a diner in Alaska to do the same thing as you’re doing in Florida unless you acquire a lot of fame.
Theoretically, once your trademark is registered with the USPTO, the entire country and the entire world are on notice of you using that mark. So, if you’re a local business that is savvy enough to get federal registration for your trademark with the hopes of expanding, then you may have the right to stop people from using the mark.
However, if you deliver through any eCommerce site such as Amazon, then you have protection all over the country because you can reasonably assume that people from all over the country are your target audience and consumers and that they’re using the internet like we all are.
In short, while trademarks are still somewhat territorial, they tend to be nationwide in the age of the internet and technology.
For more information on Licensing Deals For Your Trademark In Commerce, a free initial consultation is your next best step. Get the information and legal answers you are seeking by calling (615) 590-9787 today.
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