Trademarks – Duty to Monitor

Trademark Registration Trumps Prior Use? Not Entirely

Posted November 15, 2010 by Andrew Mirsky 0

Trademark registration generally trumps an unregistered (i.e. common law) use of the same trademark, so says @cyclaw in speaking about trademark registration in Canada.

I had tweeted this #trademark question:

What happens if you apply for – and get – US federal trademark registration, but later find that someone else has been using the same trademark since before you filed? Or for that matter, does it even matter whether you discovered this other use prior to your filing for registration.

Thank you to @cyclaw for that quick reply. In the US, though, the answer is slightly different: it matters only whether you can demonstrate your use prior to the date of first use by the other party. So while US federal registration generally trumps common law use, first-in-time unregistered users do retain certain – albeit limited – rights which survive and trump another party’s later registration.

Trademarks: Why Necessary to Police Infringement of Your Marks

Posted November 7, 2010 by Andrew Mirsky 0

A little-appreciated requirement for trademark owners is a duty to monitor and police their trademarks. This duty applies to owners of unregistered trademarks as much as federal registered marks, since registration is not necessary to claim many trademark rights.

What types of activities must be monitored and policed? Infringement and dilution. Or in other words, any third party uses of the same trademark or confusingly similar versions that might cause confusion in the marketplace about the source of the goods or services represented by the trademark.

Trademark Duty to Monitor and Police

2 basic reasons to monitor and police: First, the government won’t do it for you. The Trademark Office is actually quite explicit about stating this, see here. Second and more to the point, unchallenged third party uses of a trademark could legally – and actually – weaken the strength of the trademark as an identifier of the owner’s goods or services, which in turn weakens the owner’s ability to later enforce the trademark and devalues the worth of the mark.

MediaTech Law

By MIRSKY & COMPANY, PLLC