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About Trademark and Copyright Protection

Basis for trademark rights in the United States and registration in the United States Patent and Trademark Office

How trademark rights are acquired/where they exist and can be enforced:  In accordance with applicable law in this country, proprietary rights in a mark are acquired by using it on or in connection with products and or services.  Those rights include the exclusive right to use the mark for such products and or services.  Thus, it is arguable that rights in a mark come into existence upon first use as a mark.  However, the geographic area throughout which rights exist at the time and later depend upon where products and or services identified by the mark are offered, or they can also depend upon federal registration as indicated in the following section.

Ordinarily, the person who first uses a mark in a particular geographic area may be able to obtain the exclusive right to use it there for the products or services the mark identifies.  As use expands into other geographic areas, so does this exclusive right as long as no one else first used the mark earlier in the expansion area.  The date of first use is often referred to as the priority date and can determine who has the exclusive right to use a mark when it or something similar is used by two or more persons. Refer to the section below titled Infringement considerations for information about the role of the priority date in such situations and for information about when a priority date can be earlier than actual first use of a mark in the section titled Federal registration.

This right to use a mark is not nationwide automatically on the first use date unless (a) the mark is used everywhere in this country on that date, or (b) a federal registration was issued on that date (see below.  If this is not the case, then the exclusive rights in a mark only expand geographically as the business under it expands geographically.

A person having a priority date in a particular geographic area could have a basis to challenge a later user (i.e., first use after the priority date) of a confusingly similar mark for the same or similar products or services in the same geographic area regardless that the later user has been able to incorporate or qualify to do business under the name in that state/area.

Concurrent trademark use:  When the first user of a mark does not use or establish a reputation for it everywhere, it is possible someone else can also obtain rights in the mark in areas where the first user has not made use or established a reputation for it.  If this occurs, both persons have a right to use the mark at the same time in different geographic areas without infringing the other’s rights.  Such persons are referred to as concurrent users.

One result of concurrent use rights is each concurrent user is unable to use its mark in geographic areas where the other is the first user.

Concurrent use also is possible under circumstances where neither party is able to show its mark acquired distinctiveness prior to the other person’s first use.

Incorporating and qualifying to do business are not the same as trademark registration:  Incorporating or qualifying to do business under a name is done on a state by state basis, but this process does not result in registration of the name as a trademark.  To register a mark it is necessary to separately file an application with the state, usually with the Secretary of State.

Furthermore, formation of a corporation or qualification to do business does necessarily preempt the earlier rights of someone else in the same or similar name in the state where the corporation is formed or qualifies to do business, or elsewhere.  Accordingly, the ability to incorporate or to qualify to do business under a name in one state does not mean it is available in this regard in a different state or use in the state where the corporation is formed or qualifies to do business, without potential conflict.

When a Secretary of State or other state agency accepts a corporate name this means primarily that the Secretary of State or agency feels that the name does not conflict with a name that is shown in its records.  It looks only at and relies only upon its own records, not the records of any other states or those of the United States Patent and Trademark Office. Similarly, it does not consider names used by businesses who do not record them in its offices, whether required to do so or not, which in many cases are names used by sole proprietors, partnerships, and others.

You should arrange for a trademark search to learn about registration prospects/infringement risks:  I recommend conducting a search for a mark before preparing and filing an application.  Please refer to the document Trademark Search Descriptions to learn about a search and the costs and time it takes to obtain search results.

Search data can be helpful to

•  predict whether the United States Patent and Trademark Office may refuse registration on the ground a mark is confusingly similar to a registered mark;

•  create awareness of whether there may be trademark infringement/unfair competition liability risks associated with its use of the mark in the United States; and

•  give a feeling for the scope of rights you can acquire in terms of how many marks like it are used now by other persons.

For questions about trademark searching, please contact me.

Federal trademark registration:  There is a way a trademark owner can obtain nationwide rights to use a mark without the need to use it everywhere throughout the country.  This can be done by federally registering the mark in the United States Patent and Trademark Office (“Office”).  For possible exceptions to nationwide rights, refer to the section below titled Exceptions to nationwide rights.

Regardless of when and where first use of a mark occurs, federal registration can result in a nationwide priority date as of the application filing date, if the applied-for mark is registered.  That date (i.e., the application filing date) is referred to a constructive use date.  It is treated, from a legal standpoint, as the priority date throughout the country regardless that the registered mark has not been used everywhere.  Accordingly, when there is a conflict between two or more persons regarding who may be able to prevail regarding the exclusive right to use a mark, the constructive date can come into play.  It has the same role as the priority date in a situation where there is a conflict involving a mark that neither user has federally registered.

If a registrant’s actual first use date is earlier than the constructive use date, the registrant can rely on that date rather than the constructive use date.  For instance, the registrant’s actual first use date can be controlling rather than the constructive use date when another person first uses a mark the same as or like the registered mark after the actual use date but before the constructive use date.

Length of time to obtain a federal trademark registration: The length of time it takes to obtain a registration depends upon many things.  For instance, factors that affect this time period include whether the Office requires additional information or clarification regarding an application, or initially refuses registration.  In addition, the size of the Examiner’s docket and how promptly an applicant responds to Examiner actions affect this time period.  In some cases the time period can be one year or less from the filing date depending on the type of application filed.

An application is examined by the Office for purposes of determining whether (1) it satisfies registration requirements and whether (i.e., appropriate trademark subject matter, description of the products/services the application covers, use in qualifying commerce, etc.); and (2) the applied-for mark is confusingly similar to one or more registered or earlier-filed (i.e., filed prior to the applicant’s filing date) marks found in the Office records in terms of sound, appearance, and meaning of the marks as well as the product/services the applied-for mark and registered mark(s) identify.

Keeping in mind the foregoing, It is possible the Office may refuse registration.  In the event there is a refusal and it is not overcome, the application will abandon.  Similarly, if the Office issues an action and a response is not timely filed, the application will abandon.  If an application abandons, there would be no refund of the fees/costs you incur in connection with it.  Also, there would be no nationwide priority date for the mark based upon the application.  It would be lost.

If the examination results in an Office determination the mark meets registration requirements and is not confusingly similar to a registered mark, the applied-for mark will be published in the Office Official Gazette for opposition by anyone who believes it should not be registered.  If an opposition is not filed, the mark will be registered unless evidence of use must be filed as a condition of registration. In the event an opposition is filed, an adversary proceeding is initiated in the Office with evidence and argument presented by each side to the Trademark Trial and Appeal Board, which will consider the parties’ positions and decide whether registration should be granted or refused.

Regardless of the time it takes to federally register a mark, an applicant’s rights throughout the entire United States can be based upon the constructive use date, if the mark is registered, if the application does not abandon and the mark is registered.  In some cases, two or more years may pass after the filing date before a registration is granted.

Bases for filing a federal trademark application:  Federally registering a mark involves filing an application to register in the United States Patent and Trademark Office, in Washington, D.C.

A federal application cannot be filed unless the mark:
•  is lawfully used on products or services offered in commerce regulated by Congress (i.e., qualifying commerce, which is commerce between or affects two states or more or between the United States and another country) – a Use-Based Application; or
•  will be used in qualifying commerce and the application is based upon a good faith intent to use – an Intent-to-Use Application; or
•  is the subject of a foreign application or registration

Thus, a Use-Based Application is filed for a mark that has been used lawfully in qualifying commerce prior to filing.  This means evidence of use of the mark must be filed in the Office as part of the application.  Appropriate evidence of use is noted in the next section of this document.

For an Intent-to-Use Application, evidence of use is filed after use of the mark, which is a condition of registration.  The evidence can be filed at any time during the application prosecution process or after the Office accepts the mark for registration conditioned upon no opposition by a third party.

*** Use in qualifying commerce means lawful use of the mark in connection with products in qualifying commerce, and in connection with services means those that are offered or performed in qualifying commerce.

*** Use of a mark means use in interstate commerce in connection with products that are sold and or given away and for services that are offered or performed for payment or otherwise.

*** An intent to use application is one that is for a mark that has not yet been used in qualifying commerce in connection with the products and or services it identifies, but for which there is a bona fide intention to use it in qualifying commerce.  This type application includes a mark that has been used, but not yet in qualifying commerce.

Appropriate evidence of trademark use:  For products the evidence can be in the nature of copies of labels, tags, packaging and or other items that include the mark used in connection with the product it identifies.  A photograph of the product is acceptable if it shows the mark attached to or on the product or packaging for the product.  A website page that displays the product, and provides a means of ordering the product can constitute evidence of use as long as the mark appears on the web page in a manner in which the mark is associated with the product, and the web page provides a means for ordering the product.  In lieu of sending actual labels, etc., you can scan and send to me a label, packaging, or other item by e-mail as a jpg or pdf file.

For services the evidence should be for the services the application covers and can be in the nature of a copy of advertising and or promotional material that includes the mark and refers to the services.  A photograph of the material is acceptable if it shows the mark and refers to the services.  A website page that displays the mark and refers to the services can constitute evidence of use.  In lieu of sending actual material, etc., you can scan and send it to me by e-mail as a jpg or pdf file.

If the mark has been used, I recommend you keep and maintain a file that includes documentation that shows the date of its first use and the date of its first use in qualifying commerce.  For instance, documentation could be an invoice, purchase order confirmation, or other material (e.g., promotional literature for services) you can rely upon to substantiate the use date.  This document could be very important if use of the mark is challenged by a third person and an issue is the date of first use.

Exceptions to nationwide trademark rights:  Notwithstanding federal registration, there are exceptions to the registrant’s nationwide rights.  Anyone who first used a confusingly similar mark prior to the registration date (for uses before November 16, 1989) or prior to the application filing date (for uses after November 16, 1989), has a right to continue using the mark everywhere it occurred prior to the registration (application filing) date.  This exception is conditioned upon the non registrant’s first use without knowledge of the registrant’s prior use.  This defense to an infringement claim is available pursuant to 15 U.S.C. 1115(b)(5).

Keep in mind that because of the way rights are acquired in a mark/business name in this country, the apparent availability for use in one state or geographic area does not mean it is available or can be used without potential conflict in other states or areas.

Trademark Infringement considerations:  In the event someone already uses a mark the same as or similar to a mark and challenges use, the challenged person’s prospects of successfully registering the mark and/or defending an infringement action are good if the challenged person can persuasively show the mark is not confusingly similar to the challenger’s mark.

A determination of likelihood of confusion can involve consideration of a number of factors, including the following:
•  The first use date of each mark
•  Similarity of the marks in terms of sound, appearance, and meaning
•  Similarity of the goods/services the marks identify
•  Trade channels through which the goods/services travel
•  Sophistication of members of the relevant public and or trade who seek/come into contact with the products/services
•  Strength/weakness of the marks evaluated in terms of their uniqueness and or common use

If the challenged person does not prevail on a challenge to an application, the Office will not register the mark.  Likewise, if a court action is filed and there is an infringement finding an injunction may be entered prohibiting the challenged person’s use of the mark.  It is also possible the court would enter an order requiring the challenged person’s to pay money to the objecting party.

For questions about trademark registration, please contact me so we can discuss them.

What I do as a trademark and copyright lawyer

I am a trademark and copyright attorney with an office in Denver, Colorado offering a wide range of services concerning these areas of intellectual property law.  I have prosecuted more than 1000 trademark applications in the United States Patent and Trademark and many others in foreign countries.  I provide services to clients throughout Colorado, the United States, and from other countries.

I also provide alternative dispute resolution services as a mediator concerning trademark and copyright disputes, among other types of disputes, as well as early neutral evaluation

My background and experience in the field of intellectual property

I have an extensive working knowledge of and practice that focuses on laws that govern trademark, copyright, and related intellectual property matters.  My expertise was developed as a former Trademark Attorney for the United States Patent and Trademark Office, Washington, D.C., as Attorney Clerk to the Trademark Trial and Appeal Board, and subsequently as a corporate in-house intellectual property attorney for two Fortune 500 companies, General Foods Corporation in New York and Borden, Inc. in Ohio.  Prior to opening my office in Denver, Colorado I was an intellectual property special counsel and partner with two large international law firms.

I work with trademark and copyright professionals in foreign countries

Based on and through my longstanding personal relationships and work with law firms in other countries, I serve clients’ intellectual property needs worldwide.  In addition to my United States clients, I represent numerous foreign clients and have provided services as an intellectual property consultant to more than 15 countries.

Clients benefit from my cost-effective trademark application and protection strategies

As a trusted resource, I provide skillful legal counsel in addition to alternative dispute resolution and negotiation services.  I provide services on a one-to-one basis directly with clients and often develop creative solutions and strategies that resolve disputes and avoid third-party rights violations.  Clients appreciate my ability to devise cost-effective trademark and copyright application filing strategies and maintenance programs.  They also find valuable my guidance in identifying their intellectual property assets and review of portfolios concerning them that are often a focus of mergers and acquisitions.  My success rate is high for federally registering trademarks and copyright claims.

I am client-oriented  and can provide second opinions regarding trademark and copyright protection

Clients benefit from my experience from a time and cost perspective.  In most cases I can quickly evaluate a client’s objectives and or material from a protection perspective and recommend a practical course of action that takes advantage of applicable legal rights.  Many individuals and businesses benefit from second opinions I can provide and evaluation of issues and positions previously reviewed by others.

I provide more than trademark application and registration maintenance services

Protecting brand names, domain names, logos, trade dress, slogans, and related subject matter
Preparing and filing trademark applications in the United States Patent and Trademark Office
Conducting trademark and service mark searches
Company name searches
Evaluating, assessing, and providing opinions regarding traditional and non-traditional trademarks
Providing guidance and assistance with respect to renewing United States Patent and Trademark Office registrations
Counseling clients concerning the implementation of practical trademark enforcement strategies
Negotiating, reviewing, and preparing license, coexistence and other trademark-related agreements
Representing clients regarding domain name dispute proceedings, administrative hearings before the United States Patent and Trademark Office Trademark Trial and Appeal Board, and infringement lawsuits
Assessing infringement claims by and or against clients
Protecting trademarks in other countries

I provide copyright registration and licensing services among other services concerning copyright protection

Preparing and filing applications for copyright registration in the United States Copyright Office
Reviewing, drafting, commenting on, modifying agreements concerning copyrighted subject matter
Counseling clients concerning copyright enforcement strategies
Assessing infringement claims by and against clients

Below are examples of what copyright law can protect

Advertising and promotional material
Architectural works, architectural drawings
Art, sculpture, jewelry, drawings
Audiovisual material (e.g., compact discs, DVDs, film, slide shows, PowerPoint® presentations, video)
Author-publisher-agent relationships
Books, lectures, magazines, plays, poetry, speeches, instructional and training materials, research reports
Computer software
Confidential information, trade secrets
Dramatic works and performances (e.g., plays, musicals)
Games, toys
Radio, television, and cable programs

I have received peer and client recognition for the quality of my services as a trademark and copyright lawyer

Listed in Best Lawyers in America since 1993 and a recipient of Martindale-Hubbell’s coveted AV Peer Review rating since 1980 (an objective indicator that a lawyer has the highest ethical standards and professional ability)
Recipient of United States Patent and Trademark Office Superior Performance Award
Jefferson County Mediation Services: Mediator of the Year Award 2011
First Judicial District Bar Association: Probono Achievement 2010 – Mediation
Best Lawyer’s in America 2012 Denver Copyright Law Lawyer of the Year
Published Author
Speaker and Trainer
Expert Witness
Bar Admissions in Colorado, New York, Ohio, and Wisconsin as well as a number of federal courts.

To set up an appointment or to contact me :

David A. Weinstein
695 South Colorado Boulevard, Suite 360
Denver, Colorado 80246

© 2012 David A. Weinstein.  All rights reserved.