Can You Prevent Unauthorized Use of Your Business’ Unregistered Trademark?

A trademark is a type of intellectual property consisting of a recognizable design that identifies your product or service, and distinguishes it from other products or services.

Trademark law is primarily regulated by the Lanham (Trademark) Act under 15 U.S.C. § 1051 et seq. In accordance with this Act, interpreting regulations and relevant court decisions, the United States Patent and Trademark Office (USPTO) allows businesses and individuals to register their marks.

Once registered, this mark registration serves as “prima facie” evidence of the mark’s validity. Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U.S. 140, 147 (2023). However, this does not mean that non-registered marks cannot be enforced. It is also well settled that the “owner of even an unregistered trademark can ‘use [the mark] in commerce and enforce it against infringers.’” Id.

When suing to prohibit someone from using your business mark, the court “must decide whether the defendant’s use is ‘likely to cause confusion, or to cause mistake, or to deceive.’” Id.

The ‘“keystone” in that statutory standard is the “likelihood of confusion.” “And the single type of confusion most common in trademark law’s sights is confusion ‘about the source of a product or service.'” Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 428, 123 S.Ct. 1115, 155 L.Ed.2d 1 (2003).

Therefore, lack of registration does not bar a business owner from enforcing competing use of a mark. However, it is highly recommended that marks be registered. An approved registration will create a “prima facie” (a presumption) case that the mark is valid and that it is not competing (or was not, at the time it was registered) with other marks.

For more information on trademark disputes, contact one of our experienced litigation attorneys at 305-570-2208. You can also email our lead attorney Eduardo directly at eduardo@ayalalawpa.com. 

We at Ayala Law PA are passionate about helping those in legal need, so please don’t hesitate to schedule a case evaluation with us online here.