Trademarks as a Valuable Business Asset

Florida’s Allen, Dyer, Doppelt and Gilchrist, a highly-decorated intellectual property law firm has helped businesses obtain and protect trademarks throughout the world.  When asked what businesses should know about trademarks, Attorney Allison Imber tells her clients: “Trademark rights are territorial.  Generally speaking, the use of a mark in another country by itself does not provide you with any trademark rights in the United States. Likewise, foreign trademark applications or registrations will not impact your ability to successfully use and register the same mark here, although in some circumstances foreign applications or registrations might provide you with an earlier priority date for a U.S. federal application, which usually has a priority date as of the day of filing.”  She explains: “Trademark searches to gauge the risk of use and availability for registration are usually recommended prior to beginning use of a mark in each country, as well as discussing a trademark filing strategy with an attorney licensed in the jurisdiction of interest.”

 

Trademark rights are also usually based on use. Generally, anyone who uses a mark to provide a product or service obtains trademark rights in that mark to the extent of the use on a first in time, first in right basis.  For example, if someone sells a widget in Florida, then that very well might be the only place that the trademark rights in the widget extend, and the user would be entitled to sue a second, or junior, user for trademark infringement. However, if a junior user starts selling widgets under the same mark in California, then the Florida senior user might not be able to prevent the junior user from doing so. Of course, these are factually specific inquiries.

 

The exception to the first in time, first in right rule is a federal trademark registration, which provides constructive use of the registered mark all over the United States and nationwide trademark rights. Attorney Imber explains: “A federal registrant has the ability to sue someone for infringement in an area even if the registrant is not the senior user in that area. Other benefits of a federal trademark registration include the ability to sue under the statute for federally registered marks, the ability to register your mark with Customs, and constructive notice to others of your use of the mark.”