Many people assume that once they have been granted a federal trademark registration, they can never be sued for trademark infringement. They think of a trademark registration as an impenetrable shield that allows them to do whatever they want with their trademark and not suffer any consequences. The reality is that owning a trademark registration does not guarantee that you have the right to use your trademark under all circumstances. Sadly, some individuals learn this lesson the hard way when they receive a copy of a trademark infringement lawsuit in their mailbox. My goal is to help make sure that this unfortunate situation does not happen to you.
In the United States, trademark law is all about priority. Generally speaking, if you were using your trademark first in a particular geographic area, then even somebody with a trademark registration cannot stop you from continuing to use your trademark in that particular area. This is true no matter how old the trademark registration is or whether the trademark registration has become incontestable. You have every right to prevent the owner of the trademark registration from advertising and selling its products or services in your territory and you can file a lawsuit for trademark infringement if the owner of the trademark registration ignores your rights.
As you can see, the trademark law has the potential of leading to a very strange situation in which the owner of a federal trademark registration would actually be prohibited from using its registered trademark throughout the entire United States if you could show that you were using your unregistered trademark nationwide before the owner of the registration applied to register its mark.
The bottom line is that while ownership of a federal trademark registration provides many important benefits and protections, it does not necessarily establish who has the exclusive right to use a particular trademark in a particular section of the country. Prior users of trademarks have significant legal protections under the trademark law and can prevent owners of trademark registrations from using their trademarks under certain circumstances. If you fail to respect those trademark rights, you will likely find yourself wishing that you did.
If you have any questions about the scope of your trademark rights or perhaps need to discuss a possible infringement of your trademark, please do not hesitate to give me a call for your no-cost consultation. I look forward to hearing from you soon.