How Can I Protect My Trademark?

 How Can I Protect My Trademark? by Pat Werschulz

People always ask me how they can protect their trademark.

You protect your trademark by using your trademark. Now, assuming you’re entitled to use your trademark or brand name, because nobody else is using it for your type of goods or services, the way you develop rights and ownership is by using your trademark by selling goods or providing services.

There are three levels of protection that, once you start to use your trademark, you develop your rights in.

  1. Common Law

The simplest is common law. Once you start to use your trademark, under the common law, you have the rights to it in your territory. So what is your territory? Well, let’s say you’re a local business, such as a restaurant. People come from all over your county, and maybe the adjoining counties, to your restaurant. Your territory would be the county you are doing business in, the surrounding counties, and maybe even a little farther out. There’s a law recognizing that, as your business grows, you’re going to expand your territory. That’s the common law. It’s a simple thing. Keep using it.

The challenge is if somebody else comes into your territory and uses your trademark, or one that’s very close to your trademark, for the same type of goods or services. You first have to go to state court and prove how long you’ve been using the mark, and that it is recognized as your trademark.

  1. State Registers

State registers are good for local businesses. By using them, you prove that you have ownership in your trademark in that state, and expand your territory to your whole state. For example, New Jersey has a registry of trademarks for local businesses, and each of those trademarks are in actual use. They cannot be under an intended use.

The trademarks also are associated with particular goods and services. So, for example, if you register the name of a pizza place that’s unique to your state, nobody else in your state can use your pizza trademark.

Both the common law and the state registry allow you to put “™” next to your trademark. You should start doing that from the very minute that you start using your brand name when you start your business. It’s a good habit to get into.

Finally, we have…

  1. Federal Registration

Well, why would you settle for a lesser protection than federal registration if it’s the strongest? Well, it has some requirements. Your trademark must be used in interstate commerce.

Now, if you live in a metropolitan area, like I do in northern New Jersey, it’s pretty easy to show you’re in interstate commerce. If you advertise in local papers in New York and New Jersey, you’re in interstate commerce. Or if you are close enough to the borderlike say, the Hudson Riverwhere people from the other state cross over to do business with you, it’s pretty clear that you are in interstate commerce. That may not be so easy to show if you’re in the middle of a large state.

You have to actually use the trademark in order to get federal registration. You can apply under an intent to use, but you will not get the registration until you actually show you’ve used it by presenting a specimen of how you use your trademark.

So, you have to be in interstate commerce; your trademark can’t sound like anybody else’s in your class of goods and services; then you qualify for federal registration. Once you have a federal registration, if somebody anywhere in the 50 states uses your brand name for a similar good or service, you can take them to federal court and sue them for trademark infringement.

You’re also allowed to use the “®” to show you have registration. You can only use that if you have federal registration. You can’t use it for state registration.

So, those are the three levels of trademark protection. Each has its positives and negatives. Talk to a trademark attorney to know which is best for you and your business.

Patricia Werschulz

Patricia P. Werschulz

Werschulz Patent Law, LLC
23 North Avenue East
Cranford, NJ 07016
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