What Are Common Misconceptions About Trademark Law?
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What Are Common Misconceptions About Trademark Law?
To clear up common misconceptions about trademark law, we asked legal experts this question for their insights. From registering names not ensuring trademark protection to DIY trademark registration often leading to mistakes, here are the top four misconceptions these experts frequently encounter.
- Registering Names Doesn't Ensure Trademark Protection
- Using a Name Doesn't Secure Exclusive Rights
- Small Businesses Shouldn't Ignore Trademark Registration
- DIY Trademark Registration Often Leads to Mistakes
Registering Names Doesn't Ensure Trademark Protection
One common misconception about trademark law that I frequently encounter is the belief that simply registering a business name or domain name automatically grants comprehensive trademark protection. Many clients assume that once they have registered their business with the state or secured a domain name, they are fully protected against others using similar names for related goods or services. Trademark protection is fundamentally different from business name or domain name registration. Here’s why:
Scope of Protection: Registering a business name with the state only prevents other businesses from registering the exact same name within that state. It does not provide nationwide protection or prevent others from using a similar name in other states or regions.
Purpose of Use: Domain name registration is primarily for securing an online address. While having a unique domain name is important, it does not necessarily protect the name from being used by others in different contexts.
Legal Enforcement: Trademarks, especially those registered with the United States Patent and Trademark Office (USPTO), give the owner the exclusive right to use the mark in connection with their goods or services. This right includes the ability to take legal action against others who use a confusingly similar mark.
Use in Commerce: For a trademark to be protected, it must be used in commerce in connection with specific goods or services. Simply registering a business name or domain name without actively using it in the marketplace does not establish trademark rights.
At Right Lawyers, we have encountered several cases where clients believed they were fully protected by their business name or domain name registration, only to face potential conflicts when they tried to expand their brand or encountered a competitor using a similar name. We educate our clients on the importance of conducting a thorough trademark search and pursuing federal trademark registration to secure their brand.
For example, a client recently came to us with concerns after discovering another business using a name similar to theirs. They had only registered their business name with the state and assumed that was sufficient. We explained the limitations of their registration and assisted them in filing for federal trademark protection. This proactive step not only provided them with broader legal protection but also allowed them to confidently expand their brand nationwide.
Using a Name Doesn't Secure Exclusive Rights
A prevalent misunderstanding regarding trademark law that I often come across is the belief that merely using a brand name in commerce automatically secures trademark rights. Many assume that once a name is in use, it becomes theirs to use exclusively. However, this notion is not entirely accurate.
While it's true that you can obtain some protections through what's known as 'common-law' trademark rights by simply using a name, these rights are significantly more limited than those provided by registering a trademark with the appropriate authorities. Common-law rights are geographically dependent and can be challenging to enforce, especially as your brand grows or you venture into new markets. Without official registration, your name may be susceptible to challenges from other businesses that may hold prior rights to similar names, particularly if those names have been registered.
Small Businesses Shouldn't Ignore Trademark Registration
A couple of hours away from Mumbai is the city of Pune. A burger brand here has been dishing out delicious, lip-smacking burgers since 1989. Their business was always known as Burger King, and frankly, it never had anything to do with the American fast-food chain of the same name.
Even when the larger Burger King franchise announced its entry into India, fans of the local brand knew where their loyalties lay. But despite all the local fan-following, and even though they had all the business registrations by the name Burger King and they had been doing business in India a lot longer when the larger trademarked brand entered the Indian market, the smaller business had to make way and give up their title.
Although they have stubbornly decided to only call themselves Burger now (that’s how popular they are—they don’t even need a unique name), it is true that they did indeed give up their original business name. So, when small businesses assume that they’re too small to worry about trademark registration, they're wrong.
DIY Trademark Registration Often Leads to Mistakes
DIY is surely an option, and as a newbie, I was quite enthusiastic about doing my own research and going through the trademark process all by myself. Thankfully, all it took was a brief phone call with a trademark attorney to learn about the intricate details associated with registering a trademark, and I realized that even with all the homework I was willing to put in, I would still run the risk of making a mistake.
When I see others make the same mistake today, I tell them that when it comes to certain things, it’s better to bank on professionals who have years of experience. And that trademark registration is definitely one of them!
