Incorrectly informed people can be blindsided by a few trademark issues. One topic that frequently occurs in my conversations with potential clients involves federal registration of trademarks. If I successfully complete a trademark registration, this does not mean that the trademark does not infringe another’s brand name.
When the U.S. Patent and Trademark Office (USPTO) examines a trademark application, a trademark examiner (an experienced government attorney) reviews federal trademark registrations to determine if there are any registrations that might be confusingly similar with the application’s trademark. This has resulted in some people thinking that if the trademark is successfully registered that they have been given some level of assurance that their trademark doesn’t infringe anyone else’s trademark. This is false logic.
The USPTO examiner does not look at common law (i.e., unregistered) trademarks when determining if a new mark can be registered. Unregistered trademarks can have priority over registered trademarks if they were used first. At least in the United States and generally in all countries, trademark rights are acquired by actual use, not registration. This situation leaves open the possibility that anyone who was using a trademark first may have priority over someone with a federal trademark registration. A registered mark may be limited geographically based on the extent of use of any unregistered mark that was in use prior to the use of the registered mark.
At least for this reason, it is a best to consult with a trademark attorney about the benefits of an extensive trademark search and an analysis that would include both registered and unregistered trademarks.
Further, people need to be aware that not all trademark searches are perfect. There is always a bit of risk when operating a business, and it is helpful to have a team of highly skilled lawyers available to handle certain specialized matters like trademarks.