Spoiler alert: I think trademarks are interesting. I love how they reside at the intersection of creativity and the law. This, however, will be the last week that I write about trademarks.
Last week I discussed secondary meaning and acquired distinctiveness while providing some thoughts on how to establish these. An important factor to consider during establishment is the level of commercial use of an otherwise descriptive mark. That is: how long have you used the mark in connection with the sale of your goods or services? For example: if you use it as long as Raisin Bran, I think you’ll be all right…partially…this is technically only a half-truth: Kellogg’s Raisin Bran® was registered with a disclaimer of the exclusive right to use “Raisin Bran” but I digress.
I have been primarily focused on federal law as interpreted by the USPTO in my previous discussions but what I haven’t mentioned, however, is that in the United States – or within individual states – you have to have a trademark if you’re using your mark in commerce in connection with the sale of your goods or services. By doing this, you’re beginning to establish your rights without state or federal registration, although you can take advantage of additional legal rights once you register (assuming someone hasn’t beaten you to it).
If you sell goods, and your goods or their packaging display your trademark, then you’re using it in commerce. That’s good! If you’re a service provider — like an accountant or lawyer — you’re using your mark in commerce if it appears on your advertising materials or website (if those are some of the means by which you attract your clients).
When using your mark in commerce and you’re able to provide evidence of that use, then you may qualify for state or federal registration on that basis. If your mark is descriptive, however, you may have to demonstrate that you have been using the mark in commerce for a minimum period of time. Five years is typically a good amount of time if you’re interested in federal registration. I should say that the USPTO will allow you to apply for registration based on an intent to use the mark, so if you have a mark you want to protect and want to apply before you start using it, you can. To my knowledge, the states don’t offer this.
At the federal level, use in commerce must be interstate; i.e., you are shipping products or selling services across state lines. At the state level, use must be within the state where you are seeking registration.
So, use in commerce is a great way to establish your trademark rights and build goodwill, but in the food industry, there’s more to it than that. Your products must be of great quality. Part of producing great quality food products is having robust food quality and safety programs.
We’ll start discussing that next week.
For more information on this topic, please contact Scott Lloyd at email@example.com.
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Scott Lloyd is a registered patent attorney who specializes in intellectual property counseling and commercialization work. He has served as a technology commercialization specialist and advisor to companies in a diverse array of markets, including biotechnology, pharmaceuticals, medical devices, food and beverage, specialty chemicals, technology, and engineering. In addition, Mr. Lloyd spent ten years as in-house general counsel to small and mid-sized companies, where he managed corporate matters and resolved commercial disputes in addition to intellectual property strategy, and now serves in the same capacity for entrepreneurial clients. He serves as counsel to small and mid-sized business owners seeking to implement growth strategies and succession plans.
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