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Question: I have been using my business' name for 3 years. I think I want to “protect” my name. What should I do?
Answer: Your business’ name is a trademark. A trademark is a word, slogan, logo, or other indicia of the source of the goods or services. A trademark used in commerce informs the consuming public the source of those goods or services. Although an owner of a trademark has some common law rights to use that trademark in the category of goods and services that the owner does business, the exclusive national rights to use that trademark only occur when the trademark owner registers the trademark with the United States Patent and Trademark Office (USPTO).
A trademark should be “fanciful” or arbitrary in order to be registered with the USPTO. The trademark cannot be generic or merely descriptive of the goods or services of the trademark owner’s business. “Apple” is fanciful in relation to a brand for computers, but is descriptive when used in relation to an apple or the apple industry. The trademark registered with the USPTO protects the owner from unauthorized use in the specific category of goods and services provided by the trademark owner. For example, the registered trademark “Apple” for computers does not prevent another from using or registering “Apple” for pick hammers, pickaxes, and hand tools such as rakes and shovels, or “Apple” for power tools, or “Apple” for an automobile dealership.
Once your trademark is registered with the USPTO, you have presumptive national rights to the exclusive use of your trademark in the mark’s registered category of goods and services. However, your rights are also governed by the rule of “first to use.” The first person to use the mark in commerce with respect to a particular good or service has a right superior to all others to continue using that mark in connection with the product or service in the user’s market. This right to continued use of the mark in the user’s market is what is sometimes referred to “common law rights.” These common law rights have some limitations. For example, if a person first uses a mark within a particular geographical area and does not register the mark with the USPTO, and another person later uses an identical mark with respect to identical goods in another geographical area but registers the mark with the USPTO, the registration may effectively confine the prior user’s rights to the geographical area of use existing prior to the later user’s date of registration. This is one of the reasons federal registration of a trademark is important.
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