Suzanne, a US businesswoman, learned a difficult lesson about building a brand without first using or securing trademark. She formed a Limited Liability Company (LLC) using the brand name but did not register that name with the state or with the USPTO. When Suzanne attempted to trademark her brand name with the USPTO, she was surprised to see a very similar trademark application in progress. Unfortunately, the previous fall she had disclosed her brand name to the same group who filed this particular trademark application. In the US, if the brand or name is used in commerce, the “TM” can be placed after the name. Then, the business has common law trademark rights on that date of use without filing with the State or USPTO, as long as the continued use in commerce can be demonstrated.
If a business is not yet using the brand or name in commerce, an “intent to use” application can be filed with USPTO and in essence reserve the name or brand. In both instances, you need to check if someone else has a trademark rights for that name before starting to use the mark.
In Suzanne’s case, she had first used the brand in the fall during early advertising for her company. Unfortunately that use did not predate the date of the first use in commerce filed by the rival applicant. Otherwise, Suzanne could have demonstrated that she was using the brand name in commerce before the other organization. She then would have had grounds to challenge the rival trademark or file her own trademark application with an earlier date of use.
The takeaway is that the time to file a trademark was when Suzanne conceived the brand, and definitely before telling others about her concept and brand name. In addition, Suzanne now realizes that a record of the date when the brand name is first used in commerce is important. This example also had copyright implications because Suzanne considered writing a book using the brand name as the title. It may be logical to think that an independently created book name will receive copyright protection once it is written down. However, the rival applicant could send a cease & desist letter to Suzanne asking her to stop using the name. Consumers may be confused and think a similarly titled book is part of the rival brand. At this point, Suzanne cannot proceed with her original brand name under either trademark or copyright.
This article was written by Mary Juetten, founder of Traklight.com a site that provides inventors, creators, and small businesses with the tools to identify and secure their intellectual property. Visit www.traklight.com and take the RISK QUIZ to assess the risk of losing your IP.