Can I claim a federal trade mark by selling via mail order from Hawaii?

[AlineH]

I have registered a state trade mark for products I am selling in Hawaii. I am also starting to sell them over the internet on the mainland (mail order) so I am wondering if this gives me national trade mark rights? I am planning on eventually distributing my products to retail outlets nationally and am also wondering if my trade mark will only be protected in the states that I sell in?

I haven't managed to find an answer to this on the USPTO site.

Thanks for any info you can give me.What is the name of your state (only U.S. law)?

 

[FlyingRon]

You get trademark rights by using the mark in commerce in whatever markets you want to sell in. Registration enhances that right but is not outright required.

 

[AlineH]

I know this Ron, but I am unclear as to whether selling a product mail order from Hawaii and sending it to another state constitutes 'selling it' in that state.

Also if I register a federal trade mark does it only apply to states that I have sold in, even if my plan is to expand to all states?

I find this aspect confusing.

You get trademark rights by using the mark in commerce in whatever markets you want to sell in. Registration enhances that right but is not outright required.

 

[FlyingRon]

I know this Ron, but I am unclear as to whether selling a product mail order from Hawaii and sending it to another state constitutes 'selling it' in that state.

If you offer it and people buy it, yes you are selling it.

Also if I register a federal trade mark does it only apply to states that I have sold in, even if my plan is to expand to all states?
I find this aspect confusing.

You have to have at least the intent to use it nationally to get a federal trademark. If you don't you're lying on the application.

 

[quincy]

Internet business is considered interstate commerce when the business product or service crosses state, territorial or international boundaries, as would be the case if you were to sell and ship your product from Hawaii to another state.

Technically, as FlyingRon noted, you have trademark rights and protection through your use of your trademark in commerce, with or without registration of the mark. Without registration, a trademark owner can be awarded actual losses suffered if the mark is infringed, among other relief that can be granted.

If you intend to expand your sales outside Hawaii, however, you have some advantages if your mark is placed on both your state and on the federal registry. It can be easier to protect your mark from infringers, as federal registration puts the country on notice that your mark is in use, and should you find your mark infringed, you can choose between your state laws and the federal law when filing an infringement claim. State laws, for instance, often provide for punitive damages whereas federal law does not; the Lanham Act allows for treble damages, the infringer's profits, attorney fees. You can file claims against an infringer both under Hawaii's state laws and under the Lanham Act, when your mark is registered both with your state and federally. You will also have a choice of courts.

 

[AlineH]

Thanks!

Thank you both for your input