While it may come as a surprise to many business owners, a federal trademark registration does not grant the owner a 100% right to use the trademark in interstate commerce.  How is this so?  The answer lies mainly in the role and limited jurisdiction of the United States Patent and Trademark Office and Trademark Trial and Appeal Board.

In determining whether to grant a trademark registration, the Trademark Office looks to various federal rules, trademark examining procedures, and case law to determine whether a trademark is eligible for registration. The Trademark Office does not render any opinion on whether a trademark owner is free to use the trademark in commerce on particular goods or services of the trademark owner. Why?  Because the Trademark Office is limited to matters of registration, not rendering opinions or granting rights to use a trademark in the marketplace. In fact, there are many companies that have a trademark registration, only to be sued in federal court for trademark infringement!

Want to know more about how to avoid a trademark infringement lawsuit in Connecticut, New York, or other states?  Feel free to call me at (203) 244-4264.

 

Tags: "Connecticut trademark infringement", "New York trademark infringement", "trademark trial and appeal board"
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James Hastings is an attorney with the U.S. Trademark Trial and Appeal Board Practice Group of Practus, LLP.  He is a certified mediator of the INTA Panel of Mediators, an international roster of select professionals with expertise in trademark dispute resolution.

James is…

James Hastings is an attorney with the U.S. Trademark Trial and Appeal Board Practice Group of Practus, LLP.  He is a certified mediator of the INTA Panel of Mediators, an international roster of select professionals with expertise in trademark dispute resolution.

James is the publisher of Trademark Opposition Lawyer, an online advisory dedicated to helping brand owners understand important issues that arise in proceedings before the U.S. Trademark Trial and Appeal Board.  His commentary has been featured on Corporate Counsel, Law.com, LegalZoom,and other digital publications.

He devotes his practice to trademark opposition and trademark cancellation proceedings before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office.  Over the course of his career, he has represented the interests of numerous national and international brand owners in trademark litigation matters in both the U.S. District Courts and before the U.S. Patent and Trademark Office.

Prior to his current affiliation with Practus, LLP, James was in-house counsel to a New England-based catalog retailer, where he was responsible for developing trademark portfolio acquisition, protection, and licensing strategies.  Earlier in his career, he was a partner and associate at intellectual property law firms in New York, where he was engaged in trademark portfolio and intellectual property protection work on behalf of well-known fashion and personal care brands.

James is a member of the New York and Connecticut bars.  He has lectured at University MBA programs and legal education conferences on the issues of trademark protection and e-commerce law.

Past and Present Membership

  • International Trademark Association
  • Association Corporate Counsel

  • National E-tailing and Mail Order Organization of America

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