Last week, we talked about the difference between a Trademark and a Service mark. If you missed the discussion or you just want a little more, we also covered it in the podcast last week. This week, we are going to discuss the various levels of trademark protection available to you to protect your mark.
The levels are:
- Common Law Rights
- State Law Rights
- Federal Rights
Each level protects the mark in a different way. Each level builds on the one before it. So, think about it as building a pyramid, but the pyramid is upside down. The narrowest rights you have are common law and the broadest are Federal. So, let’s start at the low end of the spectrum.
**For our discussion today, I will use Trademark to refer to your mark. All of the principles we discuss apply to trademarks and service marks.**
Common law rights
If you are using a word, phrase, or graphical symbol to show the source of your goods or services, you have a trademark and you have rights. These rights are called “Common Law Rights”. These are the rights generally available in our country that apply to your use of a trademark. These rights give you general protection of your trademark. The protection, however, is limited to:
- What you are currently selling
- Where you are currently selling
- How you are currently selling
The issue, though, when you depend on common law rights is that you must prove it. Your common law trademark protection works for you from the time you start selling your products or services and in the places you sell your products and services, but only if you can establish you were the first one to use that trademark in that place for that purpose. So, common law protections are good, but they make protection more difficult. Of course, these issues can be bypassed by strong documentation of your sales channels and use of your trademarks.
**TRADEMARK PROTECTION TIP: It is helpful, if you do not plan to register the use of your trademark at first, to use your trade name as the name of your entity as this will establish your use of the trade name on an official document, that is maintained in your state.****
State registration does not add much to the common law rights. What it does is automatically expands the territory of protection. Your trademark, when registered with the state where you do business is protected in that state. It also provides evidence, within the state, of when and for what you use your mark. This evidence is admissible and irrefutable. The protection of your mark is no longer limited to the geography where you have sold your products and services, but you are protected throughout the state. This is especially effective if you do not sell your products or services outside of your state. If you are located within one state, you can expand your mark throughout the state by registration.
Federal Registration is the next step. It can expand your protection throughout the United States. Federal registration establishes proof of your use of the trademark in commerce. You have proof of the date you first used it in commerce. The Federal Registration process is long, but it ensures that your use of a mark is documented and that documentation is admissible and irrefutable proof of your use of the mark. That means, you can stop someone from using your mark unless they can prove they used the mark before you did (which is hard after you have gone through the federal registration).
The other benefit of Federal Registration is that you may bring any trademark case in Federal Court subject to Federal Laws. This is important because if you are a Georgia company defending your mark in Washington (where you sell products and services), you will be subject to Washington’s trademark laws. That means it could get difficult to protect your mark. On the other hand, if you have a federally registered mark, you may use Federal Courts to protect your mark. They will use Federal Laws which are uniform everywhere in the country in Federal Courts. It also means your registration will be considered irrefutable proof of your use of the mark for the products and services for which you first registered it.
So How Do you Protect Your Trademark
The big issue you run into with trademark protection are: (1) how do you protect your use of a mark in a geographic location for planned expansions of your business and (2) how do you protect your mark for planned expansions of your products or services. The expansion of your business can be easily managed with Federal and State registration as I described above. The expansion of your products and services or a planned launch that is upcoming, however is a bit different. To protect your trademark, whether it is new or you are moving into a new line of business with an old mark, you need to put it into commerce.
Do Something With Your Trademark
Put it out there. Create a landing page. Create a coming soon page. Make a website that teases the new product. Whatever you do, get your mark out there. If you sit on your mark. If you do not put it in commerce (so people can actually see it), it may be used. It may be innocent. It may not be, but if someone uses it before you do, you will lose your chance.
You can’t protect a trademark that is not used in trade. You can’t protect ideas that are in your head. With trademarks, they might as well be in your head if you have kept the idea under lock and key or behind nondisclosures and other ways of keeping it a secret. You do not need to explain everything, but you need to tease the trademark. That way, you have documented evidence that it was your idea. Get it out there.
So, what are you waiting for? Put your mark out there. Create a landing page. Put it on your Facebook page. It may help you protect a mark you have worked so long to build before you have a product to show for it.
I will talk to you next week, unless you talk to me first 😉