How to Acquire Trademark Rights

There are two ways by which a person can acquire rights in a trademark.  One way is by being the first person to use the mark in commerce.  A way of using the mark in commerce is usually sale of the particular product to the public and with the mark attached.  Therefore, if a person was the first one to sell “Fabulous” brand cookies to the public, he has gained priority to use that mark in connection with the sale of those cookies.  However, this priority is limited to the geographic area in which he sells the cookies and any areas in which the reputation of that mark is established.  Therefore, he could prevent others from coming to his geographic area and selling “Fabulous” cookies also, but he likely would not be able to prevent that person from selling “Fabulous” cookies outside of that geographic area.

The second way of acquiring rights to a trade mark is by being the first person to register the mark with the U.S. Patent and Trademark Office (PTO).  By registering with the PTO, one will have the right to use the mark nationwide even if the sales are in only one area.  Registration with the PTO is not required for a trademark to be protected, but it does provide the aforementioned benefit of allowing a person to use that trademark nationwide, subject to some limitations.  Furthermore, registration allows a person to put the rest of the world on constructive notice that the trademark is owned by him.  Therefore, if someone attempted to use his trademark he would be able to bring an infringement suit against the infringing party and potentially be awarded damages, attorneys’ fees, and other remedies.  If someone sues someone for trademark infringement, the standard that the court will consider is “likelihood of confusion.”  In other words, trademark infringement will occur when use of a trademark causes consumer confusion as to the source of the goods.  In determining whether there has been a likelihood of confusion, the courts will look at factors such as the strength of the mark, the proximity of the goods, the similarity of the marks, evidence of actual confusion, similarity of marketing channels used, the degree of caution exercised by the typical purchaser, and the defendant’s intent.

Another advantage to registration of a trademark is that after five years it will become “incontestable,” meaning that the exclusive right to use the mark has been conclusively established.


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