A common misconception shared by many of our clients is that in order to have a trademark they must have a registration with the United States Patent and Trademark Office. Our clients are often surprised when we tell them that in fact you have trademark rights from the moment you begin using the trademark in commerce (provided the mark is used properly and does not infringe another party’s rights).
Trademark registration, although not absolutely required, provides advantages that are not available for common law, i.e., unregistered trademarks. These advantages create certain presumptions that benefit the trademark holder’s claim of ownership and in preventing others from using the registered mark, in addition to some other benefits, such as having access to the federal courts and serving as a basis for foreign registrations, if ever that becomes desired. Common law rights provide the trademark owner with the ability to stop infringing uses of the mark, but the remedies are not as great.
These common law rights are what iCloud Communications, a company out of Arizona, is relying on in its suit against Apple for infringement of its “iCloud” trademark. While iCloud Communications does not have a federally registered mark, (Apple has several applications pending with the USPTO for the registration of “iCloud”) Apple may be facing an uphill battle if iCloud Communications can prove that it has been using the mark since before Apple. As we said above, first use controls trademark ownership rights not registrations. Check out the full story on the lawsuit below.Back to news