Last month, one of my clients sent me a cease and desist (cease to exist) letter that she received from a lawyer in Texas. The letter alleged that she was infringing his client’s trademark. A week before Texas sent the letter, the Patent and Trademark Office issued a certificate of trademark registration to his client. However, the registration did not enter into the picture because my client started using the trademark before the application for federal trademark registration was filed. Therefore, Texas claimed that my client was infringing common law trademark rights arising from his client’s use of the mark.
In trademark matters, first in time is first in right. However, the Texan’s letter made it clear that he didn’t understand how common law trademark rights are created. Common law trademark rights are created when a trademark is used in commerce. Trademark use means putting the mark on a product and selling or transporting the product in commerce. In its application to register its mark, the Texan’s client declared (under penalty of perjury) that it had first used the mark in May, 2013. That application was filed by a trademark attorney with literally thousands of federal trademark applications under his belt and I am inclined to believe that he got it right when he determined that Texas’ client first used the mark in commerce in May, 2013. But, Texas was not that trademark attorney. Texas did not understand common law trademark rights. He alleged that his client established trademark rights in January, 2013 when it formed a corporation having a name that included the trademark. Texas also claimed that his client’s common law trademark rights dated back to December, 2012, when it registered a domain name including the trademark. To borrow from a television ad campaign, “that’s not how it works – that’s not how any of this works.”
To my delight, my client provided me with evidence that she used the mark in commerce before May, 2013 and was, therefore, first in time. Texas was stuck with his proclamation that confusion is likely as a consequence of our clients’ concurrent use of the trademark in question. In response to his cease and desist letter, Texas received a cease to exist letter because his client, admittedly, was infringing my client’s prior common law trademark rights.
Okay. It turned out that my client used her trademark in commerce even before the Texan’s client registered its domain name in December, 2012, but that is beside the point. It is important to understand that the formation of a corporation does not, by itself, create any trademark right in the name of the corporation. The registration of a domain name does not, by itself, create any trademark right in the domain name. Trademark rights are ONLY established by using a trademark in commerce. Period. One who has not used a trademark in commerce should not claim that she has trademark rights in the name of a corporation or a domain name if the name has not been used as a trademark in commerce. It is imperative to understand this before sending a cease and desist letter alleging infringement of common law trademark rights.