As the owner of a trademark or brand name, you have the right to stop others from using a mark that is too similar to your trademark. To establish a trademark right in the US, one must use the mark by putting it on her product and selling the product. In fact, trademark registration does not create the right to a trademark; the trademark right is created by using the mark. Although this is a common law trademark right, it is enforceable and it gives one the right to stop others from using and registering a confusingly similar mark. In the US, one must be using her trademark before she is entitled to register it. So, you might wonder, why register? Registration of a trademark enhances the common law rights that stem from trademark use, but that is a subject that I’ll explore in more detail in another trademark tidbit. This time around, we will focus on the rights that do, and do not, attach to a name when one registers a name as a domain name, or creates a limited liability company, or a corporation including that name. Spoiler alert – none.
Registering a domain name is remarkably simple and inexpensive. It is often the first step taken by an entrepreneur after she picks a name, say “OkeyDokey”, that she wants to use as a trademark for her invention, the widget.
The domain name registration process takes only minutes and, voilà, the domain name is registered – OkeyDokey.com. No one else can register this domain name. Very similar domain names can be registered by others, OkayDokey.com, for example. However, no trademark right is created by the act of registering the domain name. It is only when the entrepreneur begins selling OkeyDokey widgets that a common law trademark right attaches to the name. Until then, she can’t stop anyone from using OkeyDokey as a trademark, even for widgets. It can get much worse. If another entrepreneur begins selling OkeyDokey widgets, or a similar contraption, before our first entrepreneur does, she would be infringing the other entrepreneur’s trademark rights.
Creating an LLC or a corporation under a name including a proposed trademark – OkeyDokey, LLC, does not establish any trademark right in OkeyDokey. A common law trademark right does not attach until OkeyDokey, LLC begins selling OkeyDokey widgets. Period.
In the trademark world, this makes sense. A trademark identifies the source of a product so, until the trademarked product is introduced into the market, there is no product and no product source.
What’s an enterprising entrepreneur to do after she comes up with a great trademark in order to prevent someone else from appropriating the mark before she gets her product to market? The Lanham Act provides a solution. As mentioned above, a trademark can’t be registered in the US until it is in use. However, one who intends to use a trademark may apply to register it in the US Patent and Trademark Office. When she begins using it and files something called a statement of use, a registration will issue. In this case, her rights to the trademark date back to the day on which she filed the application, thereby preventing the ugly scenario described above.