What is a Common Law Trademark?

Provided by OnlineTrademarkAttorneys.com

A common misconception in trademark law is the belief trademark rights in the United States requires the mark to be formally registered with the United States Patent and Trademark Office (“USPTO”).  This is not the case.  Instead, U.S. trademark law is based on a first-use system and trademark rights can be established simply by continuous use of the mark in connection with goods or services.  Federal registration is, therefore, not a prerequisite to trademark rights in the U.S.

So what does this mean for you and your business?  Assuming the name does not infringe on an already registered trademark, this means once you start using your mark in connection with your goods or services you have a common law trademark.  Simply put, all you need to do is use the mark to have common law trademark rights.  This is true even if someone subsequently files for federal registration of the same name.  With that said, a common law trademark is not a replacement for a federally registered trademark.  In fact, there are several important reasons why you should still register your trademark with the USPTO.

The biggest problem with a common law trademark is the rights conferred to you are substantially more limited than the rights you would have if you federally registered your mark.  One reason for this is because rights from a common law trademark are limited to the geographical area in which you sell or offer your goods or services.  This means that if you have only conducted business in the New England area, your rights to the mark would not extend to other parts of the country.  Although there are instances where a name can acquire national common law trademark rights, this is very rare and difficult to achieve.  Conversely, by successfully registering your mark with the USPTO you automatically acquire nationwide rights to the registered mark.  Assuming another person does not already have common law rights in the name, this would then allow you to preclude any subsequent person from using the name in relation to the goods or services you provide anywhere in the country.

Another reason federal registration is important is it places everyone on notice of your exclusive right to use the mark as it relates to your goods or services.  This is important because it will allow you to prevent any subsequent person from acquiring common law rights in the mark after you have registered the name.  Given the global economy we live in today, this is particularly important because it is becoming easier for people to reach a large population base to sell their particular goods and services.  As a result, the potential for consumer confusion is a much greater threat to businesses than it was twenty years ago.

Finally, federally registering your mark is also beneficial because it helps to impede another person filing suit against you for trademark infringement.  Recently, there have been many cases of small companies with valid common law rights to a mark being sued by big companies who now wish to use the name and have acquired federal registration of the mark.  Although these small companies theoretically have common law trademark rights to their name, the risk of a lawsuit does not outweigh changing their name.  This is because trademark infringement lawsuits easily will run a company more than $200,000 in legal fees, an expense most businesses cannot afford.  As a result they have no choice but to stop using their name and opt for another name.

These are just some of the benefits of acquiring federal registration.  To see more benefits of federally registering your mark, please visit the USPTO Website.  If you have a mark and are interested in more information regarding trademark registration with the USPTO, please visit Online Trademark Attorneys.

Published July 2, 2013 by Alex Spurr.


Band Trademark Registration – A Band Name is a Brand Name.

No substitute exists for a federally registered trademark. Some websites claim to protect your band’s name by listing you in a “band directory” or “band registry” and “establishing ‘prior use'”. You can get the same prior use from a free myspace or reverbnation page. However, neither is sufficient for trademark protection.

A band name is a brand name. Protect it. A band name is a word that identifies and distinguishes the source of service (live performances) or goods (sound recordings) of one party from another. As a result, a band name is registrable subject matter with the United States Patent and Trademark Office (USPTO). Trademark registration separates the kids from the adults. I’m not going to lecture about how you need to obtain trademark registration, because you know you do. There is a lot of material already on the internet detailing the importance of a trademark. I’m going to offer you some helpful hints and interesting facts regarding band name trademarks.

How to search for other band names
This is an important first step often overlooked. The USPTO offers a free basic search tool, which is just that, basic. You should never base your decision to proceed with a name using this tool alone. For example, let’s say you decide to use the name “the Lamineers” for your band. If you enter this in to the USPTO search bar you get zero results – “Yay!”. I’m sure the Lumineers won’t have an issue. Again, it is a basic tool not a comprehensive search. Attorneys have access to trademark databases that are not available to the general public through database subscription services. There is no trademark search equivalent to a legal opinion letter and search report from an attorney. However, when you don’t have the $299 for a trademark attorney search, you should at least search Google, Bing, Myspace, Reverbnation, Secretary of State websites for business filings and state trademarks, and any other place you’d expect to find a band.

Bands’ trademark disputes
One Direction (U.S.)
Their song “What Makes You Beautiful” was nominated for two MTV VMA awards. They acquired trademark registration for their name and then came to an “amicable agreement” to release the rights to their name to the British version of One Direction. The U.S. band now goes by “Uncharted Shores”.
The Postal Service
You may be familiar with their song, “Such Great Heights”. After applying for U.S. trademark registration this band received a cease and desist letter from the United States Postal Service. The two eventually came to an agreement where the USPS granted the band a free license to use the name as long as they provided a notice regarding the trademark in their future albums and the USPS agreed to sell the band’s CD on their website.
Linkin Park
Originally called Hybrid Theory, however, the band Hybrid forced them to change their name.
Led Zeppelin
Jimmy Page was initially in a band called The Yardbirds, when he splintered off to form his own band The New Yardbirds, his original band took issue. He changed the name to Led Zeppelin. A name inspired by a comment by two of the Who members that their band would go down like a “lead balloon”.
Pearl Jam
The Eddie Vedder lead group initially went by Mookie Blaylock (the name of the All-Star basketball player). Concerns with trademark issues forced them to change their name. Ever wonder why an album with 14 songs was named Ten? Well, it’s a jersey number they admire. They still hold Mookie Blaylock close to their hearts.
The Raconteurs
They go by the name The Saboteurs in Australia. In a bold move the Raconteurs adopted a new name after they received an unreasonable counter offer to acquire the rights to the name from the Queensland Australian group, The Raconteurs.

Trademark Ownership
Trademark ownership can be complicated for a band. Make sure you have an agreement detailing the owners of your intellectual property. Such agreements can be incorporated into the formation of an LLC. For example, the LLC can own your trademark, making each member of the LLC an owner. In your articles of incorporation (an agreement filed with the LLC) include what happens if a member disassociates herself from the group/LLC. Make it clear who owns the intellectual property (the current members). Also, include provisions to return the disassociated member’s share back to the LLC.

Bands should acquire trademark registration to protect their investment. After all, why would you want to pump money into marketing a name that isn’t owned by you. It’s like peddling a bike without a chain.

If you need trademark assistance OnlineTrademarkAttorneys.com provides attorney assistance at an affordable rate. Get a trademark registered for $475 plus Govt. fee. Lastly, one of my favorite sports talk shows always opens up the debate of who is the best drummer that ever existed – that’s why I’ve included a poll below (to settle this matter).

Published June 20, 2013 by Brent Sausser.

What is a Breastaurant Anyway?


Yes, you read that right…a Breastaurant. So what is it exactly? Well, according to Wikipedia, a “breastaurant” is a “restaurant that has sexual undertones, most commonly in the form of large-breasted, skimpily dressed waitresses and barmaids.”  In other words Hooters is a breastaurant, right? Wrong. Hooters was a breastaurant. Just like Twin Peaks and the Tilted Kilt were breastaurants. That’s because the term “breastaurant” is officially a trademarked name and there can only be one “breastaurant” now—Bikinis Sports Bar & Grill.

Never heard of them? Well, they’re a Texas-based chain similar to Hooters where the main attraction is not necessarily the game on that night or the beer. And with Hooters making over $1 billion each year, there doesn’t seem to be any sign of this genre of restaurant slowing down. But if Hooters is upset about the loss of this coined term, they don’t intend to show it issuing a statement to ABC News “The restaurant model that others have dubbed ‘breastaurants’ is a moniker too shallow to define Hooters.”

So now the question becomes what will we call these other restaurants where the main attraction are the scantily clad waitresses? Hooteraunts?

For more information about trademark registration and the importance of securing your business name with a trademark, please visit our website at www.onlinetrademarkattorneys.com.

Published June 5, 2013 by Alex Spurr.

Kate Middleton Knows the Value of a Trademark Registration


Kate Middleton recently trademarked her name in the U.K for the Royal Foundation Charity. According to the article, she is registering her royal title in relation to a number of goods and services, including t-shirts, in territories around the world. In the original article by The Telegraph Kate explains, “this also protects the foundation against other people using its name illegally.” My thoughts exactly, Kate.

After researching the details through the United Kingdom Intellectual Property Office (UKIPO) database, the trademark name filed is “THE ROYAL FOUNDATION OF THE DUKE AND DUCHESS OF CAMBRIDGE AND PRINCE HARRY” and it covers four international classes of goods or services. Specifically, it includes Class 25 for clothing, footwear, headgear; Class 36 for charitable fund raising; management of charitable funds; financial grant making; Class 41 for educational activities; cultural activities; organising of events (and yes, that’s how they spell organizing in the UK); publishing, including electronic publishing; and lastly Class 45 for Licensing of intellectual property. The Duchess also filed a US registration covering the same goods and services. These and other trademark registrations provide a barrier to potential infringers.

The US and UKIPO databases already show attempts to cash in on Kate’s name. The UKIPO database reveals that an applicant attempted to register, “The Duchess of Cambridge” for “a cheese which we will sell and distribute to the UK and international markets”. It did not receive a registration. The US database reflects two attempts. The first one is for a trademark filed in 2011, “KATE’S KLOSET ‘FOR THE FRUGAL PRINCESS'”. This trademark was rejected on a 2(d) basis for likelihood of confusion with the “FRUGAL PRINCESS”. In fact, the Examiner didn’t even mention Princess Kate. The second is for the not so inconspicuous mark, “PRINCESS KATE”. To which the Examiner replied, nice try, and rejected the application for a false connection with a living individual.

If you own a business and haven’t filed a trademark, you should follow in Kate Middleton’s footsteps. Protect your business from other people using your name. For more information regarding trademarks or help filing a trademark see our website: Trademark Lawyers Website.

Published April 3, 2013 by Brent Sausser.