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It may be surprising coming from a trademark attorney, but sometimes we tell people, “don’t apply!” It is a myth that it is always a good idea to file an application for trademark registration with the U.S. Patent and Trademark Office. In some situations, attempting to obtain a federal trademark registration may, in fact, not be the best idea.
When a business uses a mark, that use creates “common law” rights in the mark. Common law trademark rights offer limited protection. For example, if your business operates and uses a mark only in Denver, Colorado, your common law trademark rights may prevent another similar business from offering the same type of services in the Denver area under the same or a similar name, but it may not prevent a business from opening its doors under the same name in California. For some, common law use (perhaps together with a state trademark registration) may be sufficient for their business, especially if they do not plan to expand and want to stay local.
Don’t apply for federal trademark registration when your trademark is too generic or the field is crowded. A “generic” mark uses a term that commonly describes the specific goods or services. Generic terms are not registrable on the Principal or the Supplemental Register. For example, “BUNDT,” a term that designates a type of cake, generic for ring cake mix, is generic and cannot be trademarked.If the name of your goods or services uses a common descriptor, federal trademark registration will likely be denied and filing a federal trademark application will be a waste of time and money.
Crowded trademark fields are areas of a particular industry where many businesses adopt similar names. For example, over 20 businesses use the name “Anthony” for Italian restaurants and pizza places resulting in a crowded field and, therefore, less federal protection.So if you are looking to open an “Anthony’s Italian Bistro,” filing a federal trademark registration may not be worthwhile.
Illegal Goods or Services
Don’t apply for federal registration if your product or service is legal in your state, but illegal at the federal level. In that case, federal trademark registration would be futile. Trademark laws prohibit the registration of products that cannot be lawfully sold across state lines. For example, if goods or services involve the sale or transportation of marijuana in violation of the Controlled Substances Act, the USPTO will likely refuse a registrant’s application, even though state law allows such sale. In such case, filing a federal trademark application might not be the best idea.
Although a federal trademark registration typically offers the strongest and most expansive protection, there are some situations in which a federal trademark registration may not be the best choice. If you’re still on the fence about whether a federal trademark is right for you and your business, schedule a consultation and we can analyze your situation!