First off, this is not as silly a question as it may seem. The question arose during a spirited online discussion group exchange in response to an ABA Business Section advert concerning a CLE session they are holding.

The argument goes something like this. “Trademarking” is not a verb. What is being discussed in the shorthand of “securing a trademark” rather has to do with seeking a trademark registration. This is an important distinction, because, under the US system (common law) trademark rights arise based upon use in the marketplace. You can’t get a registration without use. And you can have protectible common law trademark rights through use, even without a registration. That’s not to say a business owner should not seek registration, it’s just that, at is core, a trademark is only as strong as the associations associated with the mark in the marketplace.

Think of it this way: the trademark law is the original consumer protection statute. Trademark law is designed to prevent confusion among consumers in the marketplace. Yes, trademark owners possess the rights, and yes, the owners can enforce the rights (for the most part). But I always quiver when a client wants to talk about the exclusive right to use a word. Try telling that to Delta Air Lines, Delta Dental, Delta Van Lines and Delta Faucets. At best a registration memorializes and (after incontestability  adheres a certain exclusive right to use a mark–but only with specific goods.

To take an extreme example from my own practice (identities changes to preserve client confidentiality), a plumbing supply distributor that we will call JEROME’S had an extensive retail and wholesale business throughout the Northeast U.S. They has been using the JEROME’S mark for thirty or more years and whenever a consumer heard the name JEROME’S, they thought of my client. Before my representation, JEROME’S had not thought to register their mark. Now they wanted to franchise some areas and the franchise consulted correctly reviewed their IP portfolio (which was empty of registrations). I did a search and discovered a registration for JEROME’S for plumbing supply services, based in Omaha Nebraska. That Jerome’s had offices in Omaha and across the Missouri River in Iowa. They were in Interstate Commerce and thus qualified for federal registration. Which they had secured in 1953. Incontestable since before my client was in business.

Yet, even then my client had recourse. The Federal nationwide registration was good, but there was never any use in the Northeast. So, we filed a concurrent use application, and after Omaha Jerome’s got a lawyer who knew what he was talking about, an accommodation was reached, for the opposing counsel knew that our use in the Northeast would trump their Nationwide registration. JEROME’S now has concurrent registrations. Usage counts.


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