Trademarks: Acquiring Your Rights

We discussed what a trademark is and what is entitled to trademark protection previously but how does someone acquire trademark rights? Let's dive in deeper here. If you haven't read Trademarks: An Introduction yet, be sure to click over there and read that first to get a handle on the basics.

Assuming you have something like a name, symbol, sound, etc. that is eligible for trademark protection, there are two ways in which you can acquire trademark protection:

1. Being the first to use the mark in commerce, or
2. Being the first to register it with the U.S. Patent and Trademark Office ("PTO")

The one exception is in respect to descriptive marks. A descriptive mark is one which describes a characteristic of the underlying product instead of just suggesting it. An example of a descriptive mark would be something like "All Bran" which describes a cereal or "Sharp" which describes a television. The only way descriptive marks qualify for trademark protection (and can be registered) is only after they have acquired a secondary meaning. This means that consumers primarily associate the mark with a specific producer instead of the underlying product.

This implies that although you might eventually be trademark protected, there will be a period of time before it acquires secondary meaning where the mark will not be protected.

So, looking at the first method, what exactly does "use" mean in "use the mark in commerce"? This generally means the actual sale of the product to the public. This protection, however, only applies to the geographic area in which you are operating plus areas where you would expect to expand into or where the reputation of the mark has been established. So let's say I open Lorimer Pizza in Brooklyn, I would most likely be protected against someone else opening a Lorimer Pizza in the same area of Brooklyn, but I won't be able to prevent someone from opening a Lorimer Pizza in San Francisco.

If you're establishing trademark protection by being the first to register it with the PTO, you must register the mark with the bona fide intention of using the mark in commerce. Unlike the using-the-mark-in-commerce method, an advantage of proceeding in this way is that you will be protected nationwide instead of only in the geographical area in which you operate. The only exception is if another party is already using that mark in a specific geographic area. In this case, your protection will extend nationwide except in the geographic area in which that party is operating.

In the Lorimer Pizza example, let's say there's a Lorimer Pizza who has established trademark protection in Brooklyn through use. When you later register your own Lorimer Pizza, you will be entitled to trademark protection everywhere except in Brooklyn and the first party will be protected only in Brooklyn but nowhere else.

Stay tuned for future posts where we dive in deeper on trademark registration!