If I do not want to formally apply to have my brand name registered with the USPTO (United States Patent and Trademark Office), can I still prevent someone from using my brand name?
This is a question I have been asked often, and the simple answer is: YES. While this may come as a surprise to many, trademark law affords protection to brands simply through their existence. While this protection and these rights are very restricted, it does extend to the brand for the products or services being offered.
So wait – what are these rights I have without a formal federal registration?
“Common law” trademark rights as they are popularly known, are essentially trademark rights that attach to any commercial use of a brand name (within the United States). The key difference between a federal trademark registration and a “common law” trademark protection is this: the latter affords trademark rights only in the geographic area where the mark is being used, and where the products or services are being offered. There are certain factors that come into play when analyzing the extent of a common law trademark: advertising, expansion, reputation and sales. The level of advertising and the amount of time, effort and money spent on advertising the mark is highly relevant to determine the “zone of protection” for any common law trademark. Efforts to expand the reach of the mark are also relevant. How much goodwill the mark gathers and how well-known the brand is/becomes over time, is also one of the determining factors. Lastly, the amount of sales and the extent of the reach of the sales, together with the preceding three factors, would round off the zone of protection for the common law trademark. Although this is but an overview of the analysis of common law trademark protection, courts have different tests (these vary amongst the States) in order to determine the zone of protection for any common law trademark.
Okay, I guess I understand all of that a little bit. But I am still confused – if my brand protection depends entirely on geographic use, what about my website? I ship all over the United States and my products are available to consumers across all 50 states.
An interesting conundrum. The unfortunate fact is: trademark law has not kept up with the many technological advances. Yes, we have some courts that acknowledge common law trademark in the context of the internet, but these are so far and few between, that there really is no guidance on what the law is at the moment. Due to the lack of actual, physical boundaries on the Internet, you will be hard pressed to find a court that accepts the premise that a common law trademark extends all over the United States merely because the mark has a website and advertises the sale of its products to all 50 states. Though there is no clear law on this yet, it could come down to being able to prove significant, actual sales in all 50 states and recognition of the brand in all 50 states to the extent that the products are automatically associated with that particular brand name, without any consumer confusion as to the source of the products.
The standard for establishing common law trademark protection in ALL 50 states via the internet would be REALLY high and difficult to prove because in today’s time, the internet reaches everyone, even across the entire world. All one really has to do is create a website that mentions the mark and offers products for sale. If the products are being shipped all over the United States, then way too many people would be using the same mark for the same category of products and all claiming that they have common law trademark rights. Confusing, right? This is precisely why the standard is so high. Theoretically, brands relying entirely on common law protection must establish a significant level of market penetration and must show such extensive use throughout the country that the brand name is almost synonymous with the products being offered.
I see. And what if I come across someone in another state that is also using the same mark for the same products? What rights do I have against them? Can I stop them?
Ah. This is a tough one. Technically, if they began using the mark (in good faith) before you, even with your internet presence, they could still be permitted to use their mark. And you might even be expressly prevented from offering your mark in that particular geographic area. At the end of the day though, this is ultimately a subjective analysis and would differ from case-to-case, and would depend a lot on the laws of that jurisdiction.
This is just a small exploration into what may be required for brands to successfully claim common law trademark protection in all 50 states, merely through internet use. But until the courts reach a consensus on how best to address this issue, suffice it to say we are all in the same confusing common law trademark boat.
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