Federal registration of a trademark does not halt the rights of a prior user of an unregistered trademark. Trademark rights are generally acquired from the use of a mark, not from registration.
What Can the Prior User of an Unregistered Trademark Do to the Owner of a Registered Trademark (or Application)?
The prior user of the mark may be able to successfully oppose the later user’s trademark application. The prior user of an unregistered trademark may also successfully cancel the later user’s trademark registration. Even after a trademark is registered, the registration is not immune to challenges by prior users.
The prior user of a trademark may also be able to prevail in a lawsuit against the later user and registrant. The prior user may be able to obtain an order for the registrant to stop using the trademark and for the USPTO to cancel the trademark registration. In a lawsuit, the senior user may receive an award of monetary damages, including profits received from the use of the trademark, and in some cases, punitive damages.
The Importance of Clearance Searches
If trademark registration does not ensure your trademark is safe and you will not be sued by a prior user, how do you protect yourself? A “Full” clearance search is the best way to reduce risk. A Full clearance search examines prior registered and unregistered trademarks that you might infringe on. (See my prior article about trademark clearance searches.)
For Full clearance searches, I use a third-party data company specializing in collecting trademark and business data. Google searches are designed to give the results that the user will find most useful. Google search results are not designed to be comprehensive. Although a good starting point, a Google search is not a good substitute for a proper Full trademark clearance search.
If a Prior User of an Unregistered Trademark has Superior Rights, It Might Be Time to Walk Away
If you discovered a prior user of an unregistered trademark for the same or related goods and/or services before filing your trademark application, it may be worth the time to consider a different mark. Here is the link to the USPTO database.
If Registration Does Not Cut Off Prior Users’ Rights, Why Apply to Register a Trademark?
There are many advantages to trademark registration. First, if your application is on file, all subsequent applications for the same or similar mark should be refused registration, even if those applicants used the mark first. This is called priority. Applications are processed, and registered, in the order they are received.
A trademark registration gives the public notice of your ownership of the trademark, which is quite useful for enforcement. Amazon.com gives great weight to trademark registrations when policing its site. US Customs can use a trademark registration to prevent counterfeit goods from entering the country. And, trademark registration can be the basis of a strong and powerful letter to an infringer, demanding that they cease use of the mark and desist from future activity.
Additionally, when a registered trademark is the subject of litigation, the registered trademark has a presumption of validity and ownership. This is because the USPTO has thoroughly examined the trademark before registering it. A trademark owner does not need to produce evidence of validity or ownership unless those presumptions are rebutted.
Finally, a trademark, along with the associated goodwill, is an intangible asset that can be quite valuable, whether in a sale or through the grant of the right to use the trademark for a fee.
Use the Link Below to See Our Fees and Start a Clearance Search or Trademark Application
If you wish to retain Hartmans Law for trademark clearance search, please contact me, Eric Eagle Hartmans, at (310) 954-8512 or visit the Trademark Services page of this website.