Johnson & Phung LLCFree Consultation


By Staff

Johnson and Phung PLLC
Patent and Trademark attorneys
General patent and trademark Information

Topic Covered

A. Type of trademark rights
B. Common law trademark rights
C. Federal Statutory trademark rights
D. Advantages of obtaining a federal trademark registration
E. “Incontestable rights” to Federal Statutory trademark

Trademark rights are acquired in the United States through either (1) common law use of the trademark or (2) statutorily by filling a trademark application in the U.S. Patent and Trademark Office (USPTO) and obtaining a registration.

Due to associated costs, sometimes opt not to register their trademarks at the USPTO. A mark that is in use but not federally registered creates “common law” trademark rights. However, those “common law” trademark rights are limited. One important limitation to “common law” trademark rights is that your rights only exist in the geographical area in which you are using the trademark. Your rights may be further limited if someone else, not knowing about your use of the trademark, files an application with the USPTO (United States Patent and Trademark Office) and obtains a federal trademark registration. In this scenario, your rights will be limited to the geographical extent of mark usage, as of the filing date of the other party’s application.

Federally registering a trademark avoids these problems, while offering a number of other significant advantages.

One of the underlying principles relating to rights in a trademark is that the first user of the trademark has superior rights (everything else being equal). The importance of using a trademark first or filing an application in the USPTO first cannot be overemphasized. The advantages of obtaining a federal trademark registration include:

Provides constructive notice of your trademark rights to others within the US and places that mark in the records of the USPTO where many trademark searches are performed, thereby providing actual notice to others of your trademark rights when they are choosing a trademark.
Once a registration is obtained, the USPTO may use your registration to stop others from receiving registrations for confusingly similar marks.

Provides nationwide notice of ownership of your mark as of the registration date.
Gives you the right to use the ®symbol for the goods and services listed in the registration.

If your mark is registered then any third-party copy of your product with that mark may be considered as a “counterfeit” under federal law. If that registration is recorded with U.S. Customs, importation of those counterfeit products can be blocked.

After five years of registration and continuous use of a mark, you may acquire “incontestable rights” to that trademark. The incontestable rights to a trademark can provide great value to you, not only during your ownership of the business, but also upon sale of the business.

“Incontestable Rights” means that legal challenges to your right to the mark are quite likely very limited.

Incontestability also provides a trademark owner with peace of mind from cease-and-desist letters. For example, if you have a common law trademark (again, no federal registration) and someone has a federal registration for the same/similar mark for the same/similar goods and services, you may have to stop using that mark, even though substantial goodwill may have been developed through your use for several years. If a trademark owner has a federal trademark registration, and that mark has been registered and used continuously for more than five years, a cease-and-desist letter from an unknown prior user will likely be somewhat of a non-event.

A federally registered trademark that has become incontestable can also be of great benefit if the owner decides to sell the business associated with that mark. Typically, in the sale of a business that includes a trademark, the buyer wants assurances that you have rights to the mark, with such assurances usually couched in the form of a warranty. If you own a federally registered trademark and one that is incontestable, the owner/seller may be able to negotiate away the warranty in such a sale – because the trademark is “incontestable.”
When you get down to it, there is really only one choice between federal trademark registration and common law trademark rights, and that is registration.

*** Please note that the above information is only general information and should not be considered as legal advice. If you need specific legal advice regarding patent law or trademark law, feel free to reach out to the attorneys at Johnson and Phung for a free initial consultation at our “Contact Us” page at

Johnson and Phung PLLC
We are a Twin Cities patent law firm and Twin Cities trademark law firm that has been committed to helping clients with their Patent, Trademark, and Intellectual Property Law needs in Minneapolis, St. Paul, the Twin Cities metro area, Duluth, Mora, Rochester, Mankato and all of greater Minnesota for over 40 years. All of our Minnesota patent attorneys and trademark attorneys are registered patent attorneys with each having over 20 years of experience."

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