Intellectual Property

One of the most common ways to establish trademark rights is through Internet sales of goods and services. However, in order to qualify for a federal trademark registration based upon use on a website, you must follow technical requirements.

We are asked how to get a trademark in the United States. You must actually sell goods or services in New brand owners often ask how to get a trademark registration. In the United States, you must sell goods or services in interstate commerce (across state lines) containing the trademark. In much of the rest of the world, use is not required to get a trademark registration, since the first to register can obtain rights, even over a prior user.

Valid use means the trademark must appear on the goods, the packaging for the goods, or displays associated with the goods. When it comes to selling products on the Internet, the “displays” require one offer the product for sale with an online shopping cart that allows for purchase of the product or services.

Trademark lawyers Bill Finkelstein and Cheryl Hodgson discuss the difference between an active website and a passive site for purposes of establishing federal trademark rights. What are the requirements to establish rights on the Internet for both services and when selling goods?

Clients new to the process of trademark registration sometimes ask first “how to copyright a name?” People confuse the terms trademark and copyrights, since patents trademark and copyrights were long ago lumped together by tradition. They are in fact separate and completely different areas of law and expertise. The correct question to ask is “how to trademark a name?” There is no such thing as copyright protection for a name. Instead, a copyright protects the artistic expression of an idea, such as a song, book, photograph, or art. The name of a product or service is covered by a US trademark, so “trademarking a name” is the more appropriate phrase. A trademark serves to identify and distinguish one merchant’s product or service from another.