How Do I Trademark a Name?

Your trademark may be your most valuable asset and should be protected. The best way to protect your trademark is to register it. You can register a trademark with the United States Trademark Office, state trademark offices and in other countries. The best approach depends upon your business and its future expansion.

Trademarks in the United States

In the United States, merely using your trademark gives you rights. They are called common law rights. These rights only extend to the geographic area in which you use your trademark. But, if you register your trademark with the United States Patent and Trademark Office, you increase your rights to the entire United States.

The Burger King Case

This was the result in the famous Burger King case. In 1953, the national franchise Burger King (The National Burger King) opened the first “Burger King” restaurant in Jacksonville, Florida. By 1957, they had thirty-eight restaurants operating in Alabama, Kentucky and Virginia.

In 1957, Gene and Betty Hoots opened a Burger King restaurant in Mattoon, Illinois (Mattoon Burger King). In July, 1959, they registered their trademark Burger King under Illinois state law.

Matoon, IL Burger King

In July, 1961, The National Burger King opened their first Illinois “Burger King” restaurant. That same year, The National Burger King obtained Federal Registration for their trademark, “Burger King.”

Mattoon Burger King then sued National Burger King for trademark infringement to prevent them from operating in Illinois. The court held that the national chain’s federal trademark registration of “Burger King” gave them the right to use the mark in Illinois, except in the Mattoon market area. This was the only area where the Mattoon Burger King owners had actually used the mark prior to National Burger King’s federal registration. The Hoots’ trademark rights were only valid within their market area, which the court determined to be a 20-mile radius.

As the Court stated, “The owners of the federally registered trade mark, “Burger King,” have the incontestable right to use the mark in commerce, except to the extent that such use infringes the rights acquired by the continuous use of the same mark by others, prior to the federal registration.”

The Hoots had common law trademark rights which were limited to their area of use, a 25 mile radius around the town of Mattoon. The National Burger King’s Federal Registration was good throughout the United States, except for the one area where the Hoots had used it first. Clearly Federal Registration is more valuable.

Federal Trademark Protection

To be eligible to register your trademark with the United States Trademark Office, you have to use your trademark in interstate commerce. Basically, you have to use your trademark in more than one state.

Trademark Application

Federal Trademark registration requires the filing of an application and the appropriate filing fee. The application requires you to identify the mark, when you first used it in interstate commerce, the goods or services that you associate the mark with and the the trademark class or classes. You have to be very careful with each of these. Any mistakes can jeopardize your trademark.
If you haven’t used the mark, but you intend to use it, you can file an intent to use application.

State Trademark Registration

If you are only using your trademark in one state. You should consider state registration. Every state has their own requirements, but most are similar to the Federal Registration requirements.

Trademarks in Other Countries

It is also important to consider registration of your trademark in other countries if you intend to use the mark in those countries. Most other countries require registration to have trademark rights. They don’t have common law rights like those in the United States.

If you intend to use your trademark in another country or countries you should file for registration in those countries as soon as possible. Because these countries only recognize the registration, others may register your trademark to block your ability to use in your trademark. I have been involved in cases where clients trademarks were registered by others, requiring us to buy those rights. Basically, they were extorting the client.

One example was a distributor in Europe who registered a clients trademarks. When the client sold his business, the sale was held up until he bought his trademarks back, for $250,000.00.

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