Who generally wins in a trademark dispute between a 1st common law user who has not federally registered their trademark vs a subsequent user of the same mark who has federally registered their trademark?
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Cover Your IP Assets
Who generally wins in a trademark dispute between a 1st common law user who has not federally registered their trademark vs a subsequent user of the same mark who has federally registered their trademark?
Check this out and learn what can happen if you don’t challenge someone who is infringing your trademark.
trademark lawyer los angeles, IP lawyer, intellectual property lawyer
A domain name itself is not a trademark. To qualify as a trademark, your domain name must be used in a way that distinguishes and identifies the source of the goods and/or services. The domain name should be included throughout the content of the website and outside of the website in connection with the goods and/or services. A domain name that merely directs someone to the website does not qualify for trademark protection. See TMEP 1215.02.
For example, consider the trademark use “DIMPLES.COM has the latest trends in ladies golf wear and equipment,” as opposed to “…purchase our golf wear for women at www.dimples.com.” Without proper use, another party using the same or a confusingly similar mark may register their mark, challenge your trademark rights, and even force you to surrender your domain name.
It is a best practice to register all variations of your domain name, i.e. -.com, -.net. However, this does not mean you own a trademark registration. In order to register your domain name as a federally registered trademark, you must do so on the principal register of the United States Patent and Trademark Office. Whether you file your trademark application on an intent-to-use or use basis, you will eventually need to provide evidence (specimens) showing the domain name has been properly used as a trademark. Otherwise, you will be refused registration.
For more information on proper use and registration of your domain name as a trademark, contact your IP Lawyer, and please consider our Los Angeles-based office.
What should I be thinking about when selecting a name for my company or new product?
Once you have selected a good trademark, it is important to conduct a trademark search to ensure no one has prior trademark rights to the desired mark. The best practice is to conduct both a “Knock Out search” followed by a full trademark search before you start associating your products or services with the using the trademark.
A Knock Out search is a preliminary search of the United States Patent and Trademark office’s trademark database and the Internet to see if your desired mark is already in use by another party. A full trademark search covers all federal and state trademark registrations, domain names, business names, and common law use. The full search covers many additional sources that are not included in the preliminary search. For example, each state has its own trademark registrar that is independent from the U.S. Patent and Trademark office’s database.
The investment in clearing your mark is minimal compared to the costs of promoting a mark that later gets opposed, refused, or cancelled by another party holding prior trademark rights. If you do not adequately protect yourself, you may find yourself in a situation where you must rebrand your products, services, or even your company. Moreover, adequately clearing a trademark is the best way to avoid costly litigation for trademark infringement.
Selecting a good trademark is a critical step in starting up a new business or launching a new product. Trademarks identify products or services originating from a unique source. Most businesses gravitate toward names that are catchy, easy to remember and descriptive of a product or service. However, it is important to remember that descriptive terms cannot be protected from use by others.
The strength of a trademark depends on how clearly it may be identified with a particular source of goods and/or services. From strongest to weakest, marks are classified as distinctive (often referred to as fanciful or arbitrary), suggestive, merely descriptive or generic.
When selecting a name for a product or business, it is wise to involve a trademark lawyer early in the process to make sure that an appropriate trademark is selected. A trademark lawyer can provide legal advice to help maximize your trademark protection.