Once You Have Obtained Trademark Protection, are there Limits to the Protection?

The answer to this question is “no;” once you have successfully submitted a trademark application and received protection from the U.S. Patent and Trademark Office (USPTO), your mark does not have unlimited rights. This blog will explore a couple of the limitations of trademark protection in the U.S. 

What is Eligible for Trademark Protection?

Initially, let’s review what exactly can be trademarked in the U.S. The USPTO defines a trademark as a “word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others.” Some common examples of material that can be trademarked are logos, symbols, catchphrases, mascots, product names, and other marks that identify products or services as belonging to a certain business. Registering your trademark gives you strong protection against infringers and other advantages, but there are limitations to what a trademark can do. 

Geographic Limitations

Generally, trademarks registered within a certain country are only enforceable within that country’s borders. The U.S. is no exception; while a trademark registration with the USPTO can serve as a jumping-off point to registrations in other countries, the U.S. trademark protection alone does not make it enforceable in other jurisdictions. A handful of countries recognize each others’ trademarks (like members of the European Union). In the U.S., you can only receive nationwide trademark protection if it is registered. Unregistered trademarks are usually only enforceable in particular regions. 

Trademarks Only Protect Products or Services that you registered (or Closely Related to Your Products or Services)

Another notable limitation of a trademark is that the mark does not apply across different classes and products (or services). The USPTO recognizes 34 classes of trademarks and 11 classes of service marks. Each class has a narrow set of products or services that it applies to. For example, let’s say you have a registered trademark for “Matcha Mocha.” You put this registered mark on stationery (paper), which is in Class 16. This means that you have exclusive rights to use the name “Matcha Mocha” in relation to stationery. However, let’s say you want to start putting “Matcha Mocha” on t-shirts and jackets, which are in Class 25. Clothes and stationery are not considered related items, so your Class 16 “Match Mocha” registration does not guarantee your rights to use the same name for clothes.

In this case, you will need to file separate trademark applications because these products are in separate classes. It is possible to file what’s called a “multiple-class application” or amendment with the USPTO, but the products for which you are applying must be in commerce. In other words, you cannot file trademarks for “Matcha Mocha” for stationery AND jackets if you are currently only selling the stationery and have not started production on jackets. 

Conclusion

Registering your intellectual property is a great first step toward securing your company. Through these protections, you now have the confidence (and ability) to increase your profit margins exponentially. As with most things, however, there are limitations and exceptions to intellectual property registration. The best way to ensure you are giving your business the greatest degree of protection possible is to work with an experienced intellectual property attorney like Hayoon Kane. To get started with us, schedule a 15-minute phone appointment today!

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Hayoon Kane Law Firm

I am committed to helping business owners such as yourself understand the intricacies of the law, so you can concentrate on growing your company.

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