It’s a known fact:  many brand owners think that “trademarking” a product or service is deceptively simple. This and other common mistakes about trademark rights  tends to create confusion and greater risk to those companies who do not have a working knowledge of the basics of trademark law.  Keep in mind the following miconceptions that can create major problems for you and your team when selecting a trademark for your brand. 

1. As long as our trademark is not identical to another, we can use it.  Whether one can register and use a trademark in commerce is based on whether the trademark is “confusingly similar” to the preexisting trademark(s) of a senior user.  To determine if the trademark is “confusingly similar” to that of another party, the United States Patent and Trademark Office and U.S. District Courts look to many factors, including, the similarity of the trademarks, goods, types of customers, and other relevant factors.  In short, the more similarities, the greater the chance that adopting your desired trademark could bring rise to a claim of trademark infringement.
2. Once we apply for a trademark, we “own” it.   Contrary to popular belief, filing a trademark application in the United States Patent and Trademark Office is just the first step in the registration process. Once the Trademark Office receives the trademark application, it reviews it for several substantive and procedural requirements, and conducts its own search for preexisting registrations that may be considered confusingly similar and a bar to your registration.
3. You must have a trademark registration to have trademark rights.  Under U.S. trademark law, use in commerce is what creates trademark rights; not registration.  In fact, one cannot obtain a trademark registration in the United States without first submitting a statement of use evidencing use of the trademark in commerce.  That being said, unregistered trademarks, if properly used in connection with goods and services, create in the owner intangible property rights that are enforceable against third-parties who adopt the same or confusingly similar trademark.

Take away:  Trademark rights vest at the time of use in commerce.  One does not need a trademark registration to have enforceable trademark rights.