TME – Pursuit of Your Ideal Intellectual Property Management

Are you fully aware how your
intellectual property is legally affected when
someone else trademarks the same
-or- similar company name?

What is intellectual property?

Every company name, slogan or
logo is subject to trademark law
and common law. If your mark is
used first, then your firm has
common law rights over any other
firm even if the other firm later
obtains a trademark.
But what people do not realize is
exactly how easily their intellectual
property rights are LIMITED – in
sound, appearance and meaning –
the instant a competitor merely applies for a new trademark.
First geographically. Under common law your first use rights are limited to
where your firm actually does business, where you advertise – where you reach
your customers. This could be a small an area as a 10 block radius for a city
market, or a 10 mile radius for a restaurant or nationally if trying to attract
customers all over via a web site.
Who was first and where geographically using a mark is what matters. IF another
company trademarks on top of your common law rights, you cannot expand
outside that area, even if you were first to use. Your company’s intellectual
property rights are in effect frozen. No matter if you have been using the name,
slogan or logo for 20 years and they have been in business a single day. You
cannot expand without infringing. (In the USA, someone can tie up a trademark
for up to 45 months BEFORE use, by extending an Intent-to-Use application.)

How to get intellectual property rights

Secondly when a company applies for a trademark first, then their rights
EXPAND in sound, appearance and meaning from what they had right to under
common law. Two company names may have differed enough to co-exist before
under common law. No problem. But, under trademark law not only is the other
company who may have first use rights suddenly frozen in their trade area, but
they can never get a trademark. They will be refused any new trademark
application without recourse. Long standing company names may suddenly
become similar enough under trademark law because one has filed for a new
Then a legal can of worms can open. The subsequent trademark applicant who
draws a likelihood of confusion refusal may wrongly think they have to change
their name, slogan or logo, when they still have first use rights to fall back on.
The first trademark owner may see the new trademark application being refused,
then wrongly do a cease and desist, while not recognizing common law rights of
the first firm. Lastly, if the subsequent trademark applicant is actually infringing,
then they will be refused a trademark well after application, (9 months later in
the USA, 2 years later in Canada). They will be suddenly easier to find on the
USPTO and CIPO web sites who both publish a week after application. A cease
and desist will probably come sooner or later, unless the first company is asleep.
In summary, ideally order comprehensive legal research to clear a new name
before you ever start a business. Everything flows from a legally clear company
name. Be aware of the risk and benefits of trademarking. When the business
justifies more investment, then consider a trademark. The point is for all your I.P
to be LEGALLY CLEAR, under trademark law.
We have been using this copy for over 20 years:
Comprehensive legal I.P. research is needed to make sure your trade name is
LEGALLY CLEAR, before opening, before expansion, before incorporation or
before designing your logo. Similarities in sound, appearance and meaning
affect legal availability too.

Talk to us!

July 31, 2022 was our 30 Year Anniversary!
FACT – TradeMark Express has not had a final refusal at the USPTO in 15 years.
We have never had a refusal in Canada, or any other country ever – in 30 years.
Our work, and your heeding the advice of our network of 10 trademark
attorneys has added up to ZERO trademark filing refusals at CIPO and the
USPTO since 2008.
We wouldn’t be the oldest, most successful trademarking service in North
America without your business.
We also seem to be the last trademark service including some inexperienced
trademark attorneys, who believe in ACTUAL COMPREHENSIVE legal research to
determine if your trademark is LEGALLY CLEAR, before use and before filing any
trademark application – just like the USPTO expects. Yes, this legal research work
is needed – even if not trademarking. Trademarking is advantageous, but every
mark must be LEGALLY CLEAR, based on trademark law.
IF a comprehensive clearance legal research report isn’t 600-800 pages, then it
simply is not done. When enough research strategies are done correctly, and
enough databases are correctly accessed, then and only then will there be a
sizable enough report to prove If any given mark is LEGALLY CLEAR or not.
The problem for most firms is that they rely way too heavily upon an exact name
search on the Internet, and maybe a direct hit search on the CIPO or USPTO web
They may have been infringing upon some other firms rights in the first place
because comprehensive clearance legal research wasn’t run before first use, or
business start-up. I believe a vast majority of small businesses are totally
unaware of the risk they take when they do not do a full legal search.
At a time when MANY competitors and attorneys are shying away from doing
comprehensive clearance research, from what used to be a 100% practice in
2010, TradeMark Express has chosen to increase its talent in this critical area.
Additionally, we will continue to call out the negligent competitors who sell
trademark “application only” services, based on light Google and direct hit TESS
searches, including unethical attorneys who do not keep the promise to their
clients to protect their best interests. Former USPTO Commissioner David
Gooder called these people “trademark mills”, who “damage” their clients.
It is wonderful to come to work without fear of an angry phone call when a
trademark is refused, like our competitors tolerate every day just for their quick
application only sales. BEWARE of “TRADEMARK MILLS”, as described by USPTO
Commissioner David Gooder, on a conference call with me on June 11, 2021.
Thank you!
Chris DeMassa 650-948-0530 / Marcela 202-496-1600 / Heather 714-401-3030
Contact Us – Call – Anytime Zoom – Email
TradeMark Express
Urgent Trademark
Los Altos, California Office Staff
Washington, DC Office Staff
Open 7am to 4pm EST, Mon. – Fri.
Since 1992

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