Examining the Use of Your Trademark After Filing an Application

Filing a trademark application is an essential step in securing your intellectual property rights. However, it is important to understand that merely filing an application does not automatically grant you trademark rights. Instead, your application will be reviewed by the appropriate Trademark Office, such as the United States Patent and Trademark Office (USPTO), to see if your mark is acceptable for registration. This process can vary significantly depending on the country's legal framework.

Understanding the Importance of Registration

In the U.S., trademark rights are not automatically secured upon filing an application. According to U.S. trademark law, you must prove actual use to maintain your trademark rights. However, in regions like Hong Kong or Taiwan, once a trademark is registered, the owner gains full protection and can prevent others from using the same or similar marks. This difference highlights the necessity of registration for comprehensive protection.

The Role of Common Law Trademarks

While registration is essential, many individuals may not be aware of the concept of a 'common law trademark.' This means that the moment you begin using a mark, you acquire some form of protection, although it is not as extensive as a registered trademark. If your common law trademark is being infringed, you can take legal action in state court.

The Opposition Process After Filing

Once you file an application with the USPTO for federal registration, the application will undergo an examination by the examining attorney. If the mark is deemed unacceptable, an office action will be issued. However, the process becomes interesting when any entity can file an opposition to your mark. This is akin to a period in a wedding when the pastor says, 'If there is anyone among us who knows why these two should not be married, speak now or forever hold your peace.'

Oppositions are particularly common when someone files an application that resembles a well-established or powerful mark. For example, a young individual with the last name McFate attempted to trademark 'McFest.' Imagine the number of entities that would likely oppose such an application.

It is important to note that trademarks exist only when used in commerce. If you are the first to use a mark in a particular area, you have common law trademark rights. However, these rights are limited to your local area of business and do not provide nationwide protection. For instance, if you sell 'Nothingburgers' in Raleigh, NC, and someone else uses the same mark for the same product in Austin, TX, you have little legal recourse. However, if you federally register your mark for 'Nothingburgers,' you gain federal protection and can more effectively enjoin others from using that mark for similar products and services.

Continuing Use and Maintenance of Your Trademark

Once your mark is registered, you are required to continue using it in commerce. Neglecting to use your trademark for a significant period can result in its abandonment, leading to the loss of your federal protection. This is why it is crucial to actively use and enforce your trademark after registration.

For instance, Burger King's case in Mattoon, Illinois, demonstrates that if someone begins using a similar mark after you have registered yours, you cannot simply retroactively claim priority over the mark in your area of business. The individual with the prior use still retains rights in their local area.

Conclusion

Securing a trademark is an ongoing process that involves understanding the nuances of registration and common law rights. Whether you are dealing with the U.S. legal system or other regions, filing an application is just the first step in a broader strategy to protect your brand. Understanding the opposition process, the difference between common law and registered trademarks, and the consequences of neglect or abandonment can help you navigate this complex landscape and safeguard your intellectual property effectively.

For more information on trademark applications and legal strategies, consult with a trademark attorney or legal expert familiar with the specific jurisdictions in which you operate.