Protecting Your Creativity: The Power of Registration
To this point, I have covered what a trademark is, how the public policy rationale influences the need for trademark infringement protection, and the requirements for a mark to be registered. Today I begin explaining the benefits of registration.
At the outset, it should be noted that a mark need not be registered to receive protection. However, registration offers several advantages. Most importantly, the filing of an application for registration: 1) is considered constructive use of the mark and establishes priority; and 2) if uncontested for five years, the validity of the mark can become “incontestable."
Taking a step back for a moment, a “symbol” becomes a mark upon the symbol’s use as a mark in commerce in connection with the goods or services. That is, a symbol becomes a mark as soon as it is used to identify the source of the goods or services. Because registration is not required, it is easy to see how two or more persons could end up using the same symbol as a mark. In some situations this is permissible. But, if allowing both owners to use the symbol as a mark would create consumer confusion as to the source of the goods, only one owner will be permitted to continue using the mark. The logical follow up question then is: which of the two or more owners will be permitted to use the mark.
As you might suspect, the old adage of “first come, first serve” applies. That is, the first person to use the symbol as a source identifier in commerce will be permitted to continue using the mark. This raises yet another question: when has a person “used” a mark. For purposes of this post, suffice to say that the issue of when a mark is “used” can be very convoluted.
However, an owner can avoid disputes over her first use of a mark by registering the mark. The filing of an application for registration establishes the mark’s priority date (or first date of use). Therefore, in any dispute over who “used” the mark first, a party can avoid having to prove her first date of use if the party registered the mark.
Steve Rensch and Zach Price