Quick Trademark Question

[riverofwind]

Jurisdiction

California

Hi I have a quick trademark question.

At the USPTO's website it says one of the benefits of registration is:

• Legal presumption that you own the trademark and have the right to use it. So, in federal court, your registration certificate proves ownership, eliminating the need for copious amounts of evidence.

How much evidence is needed? What qualifies as evidence? Trademarks are first-come first-served so registration isn't strictly required to secure a trademark right?

Thanks!
Josh

 

[army judge]

Hi I have a quick trademark question

There are no QUICK & EASY questions relative to trademark law.

How much evidence is needed?

In general terms, because the matter is civil law based, a PREPONDERANCE of evidence.

Preponderance of the evidence is one type of evidentiary standard used in a burden of proof analysis. Under the preponderance standard, the burden of proof is met when the party with the burden convinces the fact finder that there is a greater than 50% chance that the claim is true. This is the burden of proof in a civil trial.

In Karch v. Karch, 885 A.2d 535, the Superior Court of Pennsylvania noted that "preponderance of the evidence is defined as the greater weight of the evidence, i.e., to tip a scale slightly is the criteria or requirement for preponderance of the evidence". Similarly, in another case from Pennsylvania, the court held that "preponderance of the evidence is such evidence as leads a fact-finder to find a contested fact to be more probable than its nonexistence."

What qualifies as evidence?

That is determined by a judge or jurist presiding at trial.

Attorneys for plaintiffs and defendants ask if a certain item can be submitted as plaintiff or defendant exhibit. Opposing counsel can argue against the request or stand mute, while the judge decides.

Trademarks are first-come first-served so registration isn't strictly required to secure a trademark right?

In the United States, it is not registration, but actual use of a designation as a mark that creates rights and priority over others. Thus, the general rule is that ownership of a mark goes to the first-to-use, not the first-to-file.

 

[adjusterjack]

On a scale of 1 to 10.

No registration = 1

Registration = 10

Quick question for you. Are you looking to justify not registering your trademark? Why? Is it the fees? Could cost you $250 and up. Is that too much for you to pay for something that could one day keep you from losing your livelihood? Or is it the complexity of the registration process? The USPTO website has all sorts of help for the first time registrant.

Trademarks

Army Judge is right.

In the United States, it is not registration, but actual use of a designation as a mark that creates rights and priority over others. Thus, the general rule is that ownership of a mark goes to the first-to-use, not the first-to-file.

But would you be happier to spend tens of thousands on litigation trying to prove you were first or would you rather be able to present your registration at a lot less cost.

It's like the oil filter commercial. Buy good filter now for a few bucks or buy the engine later.

 

[army judge]

Army Judge is right.

In the United States, it is not registration, but actual use of a designation as a mark that creates rights and priority over others. Thus, the general rule is that ownership of a mark goes to the first-to-use, not the first-to-file.

There are many facets and sides, insofar as any legality is concerned.

You correctly identified the issue, as regards registering over first use.

Initially one appears easier and less costly.

As with many things in life, proving is very often a more difficult task than merely alleging!!!

 

[zddoodah]

Legal presumption that you own the trademark and have the right to use it. So, in federal court, your registration certificate proves ownership, eliminating the need for copious amounts of evidence.

Is this a quote? If so, it's wrong.

Registration creates a presumption. It shifts the burden to the other party. However, it most certainly does not "eliminat[e] the need for . . . evidence." Whether or not the amount of evidence needed is "copious" is obviously a subjective question.

How much evidence is needed?

Enough to persuade the trier of fact.

What qualifies as evidence?

In the abstract, virtually anything can be evidence.

While those answers might seem so vague as to be useless, they are appropriate in light of how vague the questions are.

Trademarks are first-come first-served so registration isn't strictly required to secure a trademark right?

The first part of this sentence is mostly accurate, and the second part is unquestionably accurate.

Trademark rights derive from use of a mark in commerce. Registration, while not necessary to the existence of trademark rights, provides significant benefits.

 

[riverofwind]

Thanks guys. The confining factor in registering a trademark for me is hiring a lawyer (don't want to spend that kind of money as of now). The USPTO highly recommends a lawyer to facilitate the process. I'm a DIY guy so I could go it alone if it's effective enough such that I do things properly.

 

[adjusterjack]

The USPTO highly recommends a lawyer to facilitate the process.

Of course they do. They want to support the lawyer industry.

I'm a DIY guy so I could go it alone if it's effective enough such that I do things properly.

Then study everything on the USPTO site (and elsewhere), check for anybody else using the mark, fill out the form, write a check, send it in, see what happens.

 

[Tax Counsel]

The USPTO highly recommends a lawyer to facilitate the process. I'm a DIY guy so I could go it alone if it's effective enough such that I do things properly.

There is a reason for that recommendation. The lawyer can spot problems with your trademark before you attempt to register it, and will be know how to properly register your mark. That can help prevent a costly mistake that can result in expensive litigation later.

Of course they do. They want to support the lawyer industry.

The USPTO has no stake in "support[ing] the lawyer industry". But lawyers who know what they are doing do make the job of the USPTO easier. That's why it recommends people use lawyers.