There are a number of intellectual property myths that attorneys hear over and over again. Periodically, we'll feature some of these myths and expose the reality.
Myth: My company has a trademark registration so our brand name doesn't infringe on anyone else's rights.
Reality: When the U.S. Patent and Trademark Office examines a trademark application, a trademark examiner reviews federally 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 they have obtained a trademark registration they have been given some level of assurance that their trademark doesn't infringe anyone else's trademark.
However, the U.S.P.T.O search does not look at common law, i.e. unregistered, trademarks. In the United States, trademark rights are acquired by use – not registration. Therefore, unregistered trademarks can have priority over registered trademarks if they were used first. This leaves open the possibility that a third party who was using a trademark first may have priority over someone with a federal trademark registration.
For this reason, it is a best practice to consult with a trademark attorney about the benefits of a comprehensive trademark search and an analysis that would include both registered and unregistered trademark uses.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.