Patent Attorney and Founder
Here is the transcript with grammar and formatting corrections:
JD: So I’ll read off the question here. If I sell on Amazon Marketplace using a common law trademark name, is the common law mark applicable to everywhere Amazon sells? I have successfully sold books to most states for 15 years, advertising them and selling them on Amazon using the same store name. Since I list those books on Amazon, they’re available to states. Is this case – is it common valid in all states?
Someone is really trying to go on the cheap without…yeah come on come on guy, file a federal trademark. Can be done.
Matt: Um yeah so I don’t know the answer to this. I mean it, it would depend on the jurisdiction I suppose right? You know, do you touch and concern each of these states – directly or indirectly? Is there a warehouse in that state for Amazon that’s selling your books? Right. You know, does it transit through your state? I, I don’t know what each state’s common law trademark requirements are. What I can tell you is they’re pretty worthless. So what you really want is a federal trademark because it trumps every state-level trademark application registration.
JD: Yeah.
Matt: So you know, and this person may or may not be aware but um, if you have a registered trademark with USPTO or even a pending application at this point right – you can apply for Amazon Brand Registry which allows you to have A+ pages – those fancy web pages on Amazon. Uh, it also allows you to enforce the trademark on Amazon. So without that you’re kind of hamstrung a little bit in terms of your marketing opportunity.
So I would just say hey, like if you’re gonna sell on Amazon you need, you need a federal trademark application. Bo, that’s kind of my…yeah you don’t need anything obviously but it really, you shouldn’t be selling on Amazon unless you, you know, have a federal trademark.
JD: And they’ll actually help you enforce it and that basically…what you’re…
Matt: Oh yeah, yeah! I mean same thing on social media. If you unless you have a federal trademark registration you know Twitter, Instagram, X – formerly known as, you know Twitter whatever – they’re not going to do anything. You they’re not even going to look at it. They’re going to kick it right back act to you and say “we don’t deal with common law trademark rights there it is.”
JD: So get it done. You’ve been in business for 15 years goodness sakes. It is time.
Matt: Yeah very good.
JD: Anyway, one more PSA. If anyone’s out there listening we ask you, you’re welcome to ask questions. We’ll we’ll take yours as a priority here um. This may be the same individual asking a different question: “Do I need a USPTO trademark to protect my business name? I sell books on Amazon using a name I made up 15 years of history with using it. If someone else tries to use the name to sell books would I have to give it up?”
JD: Yeah this is directed at you dude.
Matt: We assume yeah…of course, of course you would right? So I mean um, the feds don’t do anything without a registration so if somebody else comes along and registers your trademark, um, they have the enforcement rights, right? So they can go pull the levers whether that’s social media, Amazon, Federal District Court – you know they get all the benefits of statutory registration which they should because they did the right thing and that is register the trademark so that there’s this issue doesn’t happen. Um, if you rest on your laurels, if you rest on your 15 years of you know use of the product or the service, right – selling this product or service – um, you know you do probably have some trademark rights that you can register with the USPTO depending on the name of course, yeah. But um, yeah there’s nothing stopping anybody else from registering the trademark.
It’s not like the USPTO goes out and does a search at common law. So when the USPTO trademark examiner does his or her search they’re looking just for uh previously applied for and registered trademarks – that’s what they’re going to site against your application. They don’t care if there’s three other people using the exact same name for the exact same product or services that are unregistered – that’s you know…it’s a self-help world…you know, they just deal with their own little universe. So yeah, register the trademark.
Matt: Yeah this is what I always think of with probably a couple grand you’re done, you know. Why Burger King versus Burger King? Oh case study classic. I love this. Look at the four double cheeseburgers they fit that all into one line. Oh half pound fry…can you look at that? Four double cheeseburgers, half pound fry $11.99 you can’t beat that with a stick! Those were the days man, those were the days. Newspaper stand out front…
JD: Oh yeah, probably still smoking in there yeah…
Matt: So but this is it…this is basically whatever that guy’s name is on on Amazon…yeah go you’re the original Burger King and so all you might maybe have rights to is wherever you can definitively prove you’ve done business!
JD: Yeah and I think the court and uh…this is a Supreme Court case I believe but um…Buring B Burger King is a huge landmark case and trademark law. Yeah basically it stands for the proposition that if you have common law trademark rights those rights don’t go past the county in which you operate – that’s it. So this is able to operate right in the same world as the Burger King that we know of…
Matt: Yep but they’re limited to basically probably like 500 people…
JD: Yeah. So I mean in this particular case, if I remember the fact pattern, Burger King – the little Burger King, the mom and pop Burger King – Jean and Betty Hoots…the Hoots…
Matt: They uh, they went to market with Burger King. They have priority or senior rights in the brand in the area that they operate. Meanwhile I believe down in Florida, if I’m not mistaken, there’s a company called Burger King that’s franchising – they’re growing rapidly and they’re not the first to use the name, especially in that particular jurisdiction right? So you know, who wins?
Well the federal court basically says well the person who filed the trademark wins because at the end of the day they filed the trademark – they have you know first used nationally right… And this third party who has senior rights in this particular state that they’re operating in – it was uh, not they basically can still operate but they can’t expand right? They’re locked into that…you know that county jurisdiction essentially.
JD: So but the person in question does have an intriguing argument perhaps – “hey I’m selling online everywhere and I I’m selling books in every state…” It’s just hilarious!
Matt: I, I think it, it maybe they’ve got some argument. I wouldn’t want to make it though. I, I wouldn’t want to roll into a court and claim common law trademark rights. I mean I’m serious – like courts don’t want… You know state level courts do not want to deal with trademarks. Federal judges do not want to deal with trademarks right? And so if you walk into a federal, you state level court and say “I have common law…you know unregistered rights in the trademark…” – judge is going to say “why are you here? Let’s go figure this out. Go get a federal trademark then go to Federal Court.”