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Where to Register a Trademark and Use Requirements

Posted by Wes Schwie | Jul 30, 2021 | 0 Comments

Where Can You Register a Trademark?

You can register a trademark with a state government, the federal government, or both. Federally registered trademarks will usually have the ® symbol used next to or in close association with the good.

Some parties may opt to forgo registration with the government and establish a common law trademark right. If you ever see the ™ symbol, this denotes the owner is asserting a common law right over the mark. (We will discuss common law trademark rights in another article.) Technically, the ™ symbol has no legal significance but does provide notice to the public that the owner is claiming trademark rights in the mark.

Registration is not required to have enforceable rights, though it does have advantages. For example, state registration provides state-wide constructive notice to the public of the owner's rights in the mark.[i]

Similarly, federal registration provides nationwide constructive notice. For example, suppose a car manufacturer has a federally registered mark for GIDDYUP (denoted by ®) but only manufactures and sells cars in California and Washington. In that case, the company can still prevent others from using the mark GIDDYUP in the remaining 48 states and U.S. territories, even though the company has no other presence or sales there.[ii]

Trademark Use Requirements

Trademark rights begin with use in commerce.[i],[ii] Generally, "use" means the owner must use the mark in association with particular goods, such as placing the mark on the goods or their packaging, in advertisements for the goods, or at point-of-sale displays, for example.

For a service mark, use may be shown by advertisements or the provision of services in actual association with the mark. The "in commerce" prong can have different meanings depending upon whether a state or federal registration is at stake. Using a mark within state commerce is sufficient if the mark owner only seeks state registration.

For a federal registration, however, use in interstate commerce or international commerce is a prerequisite. Purely intrastate commerce is generally insufficient to obtain a federal registration unless the mark owner can show a direct effect on interstate commerce.[iii]

Common law, unregistered marks also require use in commerce to instill rights in the owner. But the geographic scope of those rights may be limited to the entirety of the state where the mark owner uses them.

A particular advantage of trademarks and service marks is that the rights last in perpetuity as long as the mark is appropriately used in association with the goods or services.

Registrations, particularly at the federal level, may lapse if the owner does not file a "Statement of Use" according to the statutory guidelines. These statements are required so that the USPTO can clear off the "deadwood" from the register list and so that others may use the mark. However, losing a registration for failing to timely file a statement of use does not mean that all mark owners' rights are lost.

If the owner becomes aware of another party's use of a trademark and fails to take action to stop it, the trademark owner's right to prevent the party from using the mark may be lost. The rights are generally lost if the owner takes no action against known multiple infringing parties. The law requires diligence in protecting intellectual property rights for the owner to sustain trademark rights in court.

How We Can Help

Gallium Law has significant trademarkexperience. We would be happy to assist you in strengthening your brand and increasing the value of your business. Please call us at 651-256-9480 or fill out this Contact Form to speak with us before it's too late.

*The information provided in this article is not legal advice and should not be relied on as such. The content of this article is for informational purposes only and is meant as a starting point in your search for answers to your legal questions.

[i] Congress is given authority “[t]o regulate Commerce with foreign Nations, and among the several States, and with the Indian Tribes”. Art. I, § 8, cl. 3. Thus, use of any mark in commerce that Congress may regulate is subject to registration if the statutory criteria for registration are met. Trademark Manual of Examining Procedure (TMEP) §§ 901.01-03.

[ii] The one exception to this is an “intent to use” federal trademark registration application. 15 U.S.C. §1051(b). These applications can be filed prior to any use of the mark and serve to prevent any other party from “getting in line” ahead of the applicant. Nevertheless, use of the trademark must eventually be shown prior to any federal registration issuing.

[iii] TMEP §§ 901.01-03.

[i] Constructive notice is “a legal fiction where a reasonably diligent person is assumed to have known about something even if they did not receive actual notice. Where a party that didn't have actual notice is treated as if they had received actual notice.” (Accessed June 15, 2021). It would be impossible to give actual notice to everyone. Because trademark applications and registrations are open for public inspection by anyone the law imputes knowledge to them, even if they do not have actual notice. See also, Henry Campbell Black, Black's Law Dictionary, p. 1210, West Publishing Co. (1968).

[ii] In a case such as this hypothetical where only intrastate commerce is seemingly implicated, a substantial effect on interstate commerce would have to have been shown in the federal registration process in order to obtain a registration.

About the Author

Wes Schwie

Wesley Schwie is the founding Principal of Gallium Law and a registered U.S. patent attorney. Wes' practice encompasses all aspects of intellectual property law, including patent and trademark prosecution, licensing, litigation, portfolio management, due diligence, and infringement and validity counseling...


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