How Does Trademark Law Work?

By Daniel Scocco

questions and answersThis post is part of the weekly Q&A section. Just use the contact form if you want to submit a question.

Shrihari asks:

Are really trademarks given by use and not by registration ? You say “Daily Blog Tips” is your trademark. But i can still apply to register “Daily Blog Tips” as my trademark. Right ? In that case, i’ll have the rights to take your blog down. Am i right ? Or, am i missing anything ?

First things first, what is a trademark? According to the United States Patent and Trademark Office, a trademark is “a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.”

Notice, therefore, that trademarks are different from copyrights (which protect original works like articles and pictures) and from patents (which protect inventions).

How do you acquire a trademark? Simply by using it in a legitimate way. If you have being doing business under the name of “XYZ Company” for years, for example, you could claim trademark over that name (or logo).

Now, one can also apply for a trademark registration with the United States Patent and Trademark Office. Why should one, if trademarks are given by use? Simple: because the registration will give you several benefits, including:

  • the ability to bring people who are violating your trademark to federal courts
  • a public notice that you claim ownership over that trademark
  • the ability to register your trademark in other countries
  • an overall stronger stance when defending your trademark

You say that you could still apply to register a trademark that some other people own by use, for example Daily Blog Tips. That is correct, you can apply for it, but I doubt that you would be able to gain ownership over it.

For one thing, when you apply for a trademark, you must provide the “Basis for filling.” That is, you must explain where you are currently using that trademark. The most common “Basis for filling” is use of the trademark for commercial purposes. So you would need to be using the trademark before applying for registration.

Secondly, even if you managed to use a trademark that you don’t own (say by creating a fake website or business) and provide the “Basis for filling,” the trademark office would still have its attorneys checking the market (and I am sure they include the Internet these days) for conflicting trademarks. If they find someone who is already using the trademark you are applying to own, they will reject your application.

Finally, let me make a note about the trademark symbols. Anyone claiming a trademark can use the TM letters next to its name or logo. You don’t need to have a trademark registration for that. The ® symbol, on the other hand, is to be used only by people that own registered trademarks.



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20 Responses to “How Does Trademark Law Work?”

  • Judy

    What happens if you have a trademark and someone else has a similar one that was filed 2 months before yours? Lets say 5 years later they are demanding you turn over your trademark to them. Do they have any right to do that?

  • dave rice

    I think most trademark issues are common sense, but it helps to have it all laid down for you.

    Thanks for this informative post

  • medyum

    I will start using TM from now on!

    Thanks..

  • zippy

    So is my understanding correct when I say that if you have a registered business under say the name “Zippy” and someone comes along and uses the name “Zippy” and registers it as a trademark then the already registered business is in big crap because he didn’t register it also as a trademark? Does anyone know if you do have a trademark for the name “Zippy” and someone comes along and wants a business called Zippydoda” are they classed the same or does the guy with the registered trademark have a legal ground to stand on with regards to his name being used in combination with other words?

  • josh

    I will offer another (IP lawyer/blogger) comment here. Image Pik I’m not sure if I am understanding your scenario since you at first say that Company 2 starting using the same name a year after Company 1 but then you say that Company 2 was using the mark a year prior to Company 1.

    But in any event priority is determined by use. So if Company 1 registered its trademark before Company 2 but Company 2 was using its trademark before Company 1 then Company 2 will be able to stop/cancel Company 1’s registration and will be able to stop Company 1’s use of the trademark even if Company 2 has not registered.

    Another big advantage to registration is that it grants the trademark registrant presumptive nationwide priority as of the date of registration. So in the example above, the USPTO or a court of law would presume that Company 1 was the first to use the trademark if he had a valid registration even if this wasn’t true. Company 2 would then have to come up with evidence to support the fact that it had in fact been using the trademark before Company 1. So Company 2 would have a harder time proving its case then it would have had if it would have registered its trademark promptly.

  • Melvin

    hey daniel, these are really useful to me… thanks…

  • Image Pik

    But let’s think about this scenario.

    Company1 registers Domain1 and starts using the Name brand in 2001. Company2 registers Domain2 and starts using the same Name, but in 2002. In 2003 Company1 decides to register it’s brand, but if it’s like Mr. ToughMoneyLove’s comment say and Company2 claims “petition for cancel” for Company1’s brand registration, because it’s been running a website with this name from one year before the brand is applied for registration from Company1 (2002), but it did not yet registered it’s brand. Which side will get the right of the brand then?

  • murphyz

    “In that case, i’ll have the rights to take your blog down. Am i right ?”

    There will be an issue here with ‘prior right’. If the domain name is registered before the trademark is applied for you cannot go back and demand it simply because you now have the trademark.

    i.e. if you register oobimaa.com and someone if two years time registers a trademark for the term ‘oobimaa’ in relation to the manufacture of animalistic weebles, then they do not have the rights to your domain name simply because they now have a trademark. The registration date on your domain pre-exists the protection date allocated by their trademark.

  • laptop power battery

    Great post.

    I will start using TM from now on!

  • Marija

    Very useful post. Good question and good answer. I’ve learned something.

  • diabetes man

    thanks for good information…. this information still new for me, never read before

  • Riscario Insider

    This post and the comments are very helpful. I did not understand the differences between a trademark, copyright or patent. I’m more interested in protecting a trademark (e.g., Riscario Insider) than in protecting content (where I use Creative Commons, non-commercial, share and share-alike).

  • Eddie Gear

    Thank you daniel. This is very helpful. I will need to think about getting a Trademark and also Copyright over my website. Thanks once again.

    Cheers,
    Eddie Gear

  • Daniel Scocco

    @Mr. ToughMoneyLove, got it, and thanks for helping to clarify those details.

  • Mr. ToughMoneyLove

    @Daniel That is possible – but the prior user also has the right to file a Petition to Cancel such a registration based on evidence of its prior use.

  • Daniel Scocco

    @Mr ToughMoneyLove,

    If the USPTO does not search the market in general for prior use, is it possible that they will grant a trademark registration even if another company has already being using it for years but never registered it?

  • Mr. ToughMoneyLove

    Let me (IP lawyer/blogger) supplement your article with a couple of clarification. First, you can file a TM registration application prior to use – it’s called an “intent to use” application. That filing establishes your priority. However, you must use the mark in commerce before the registration will issue. Second, the USPTO generally searches only for registered marks in its database. It does not search the market in general for prior use. You will need to do that yourself (or hire a pro).

  • My Life Thinking

    I know that my TM is not registered, and I can not do it now because of some reason.

    Thank you for the useful information in this post, it really helped me to know lots about trade marks!

  • Mr. I

    Great post.

    I will start using TM from now on!

  • SATISH — Technotip.org

    Really useful stuff explained..

    Knowing all these things is important these days for any online entrepreneur, as internet(Online) business is growing rapidly.

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