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 trademark. 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.
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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 sites. 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 https://www.tmexpress.com/ Urgent Trademark https://urgenttrademark.com/ 650-948-0530 Los Altos, California Office Staff 202-496-1600 Washington, DC Office Staff Email: staff@tmexpress.com Open 7am to 4pm EST, Mon. – Fri. Since 1992