Is your trademark registered? Should you register it? Why should you register it? What do you have to do? What does the process look like? Can you do it yourself or do you need to hire an attorney? These are just a few of the questions that business owners are faced with when considering whether and how to register their valuable trademarks. In this two-part overview of federal trademark registration, we answer these frequently asked questions. This part focuses on the legal and business benefits of registration.
Some Context and Vocabulary
When people refer to “trademark registration”, they generally mean registering a trademark with the U.S. Patent and Trademark Office (USPTO), the agency that oversees the federal registration of patents and trademarks. As may be obvious from context, this discussion is limited to registration of trademarks in the U.S.
Many people assume that in the U.S., you need a trademark registration to have trademark rights. This is not the case. The U.S. is what’s known as a “first to use” jurisdiction, as opposed to a “first to file” jurisdiction. This means that all you need to do to acquire trademark rights is to use the trademark in connection with your products or services. That’s it. These unregistered trademark rights based solely on use are called “common law” rights.
Benefits of Federal Trademark Registration
You can, however, take your protection one step further. A federal trademark registration provides several benefits. Consider it a suit of armor worn over your already established common law trademark rights.
- Presumption of the validity of the mark, your ownership of the mark, and your exclusive right to use the trademark. A federal trademark registration carries the legal presumptions of the validity of the mark, your ownership of the mark, and your exclusive right to use the trademark. In federal litigation, the registration certificate serves as evidence of these points and eliminates the need for extensive evidence proving that you own the trademark. The owner of an unregistered mark, in contrast, must expend significant resources to establish these points to support their trademark infringement suit.
- Constructive nationwide use. As discussed above, you acquire common law rights once you start using a trademark in connection with your goods or services. These common law rights, however, are limited geographically to where you use your trademark — i.e., sell your goods or render your services under the mark — and your ability to enforce those rights are confined to that same limited geographic area. A federal trademark registration creates rights throughout the entire U.S. and its territories, even in those areas where you are not currently using the mark in connection with the goods/services covered by the registration. This provides you with a powerful enforcement tool and deterrent to would-be infringers.
- Public notice of your rights in the trademark. Federal trademark registrations are listed in the USPTO’s database of registered and pending (i.e., applied for but not yet registered) trademarks. This readily available information provides public notice of your claim to the trademark. Anyone viewing your trademark record in the USPTO’s database will see not only the trademark but also the goods and/or services covered by registration, the date you applied to register the trademark, and the registration date.
- Right to use the federal registration symbol ®. Once your trademark registers, you may use the federal trademark registration symbol ® with your trademark (as opposed to ™, which is the only symbol you can use in connection with common law marks). This shows the public that your trademark is federally registered, and it can be an effective deterrent against would-be infringers.
- Ability to record the registration with U.S. Customs and Border Protection. Once you’ve registered your trademark, you can record the registration with U.S. Customs and Border Patrol. This will help stop the importation of counterfeit goods and goods bearing infringing marks.
- Use of the U.S. registration as a basis to obtain registration in foreign countries. You can use your federal registration as a basis for applications filed in foreign countries. (We will discuss foreign trademark prosecution in a separate article.)
- Increases the value of your brand and business. Trademark registrations – both in the U.S. and throughout the world – are part of the valuation of your business and their value increases over time. If you ever plan to sell your business or take on investors, you will be asked if your trademarks are registered and where. The stronger your trademark portfolio, the more valuable your business and the more attractive your business will be to potential purchasers and investors. More generally, building a strong brand provides significant value to your business and has a great return on investment. A registered trademark can be an effective marketing tool and can help build lasting customer relationships.
- Builds a stronger trademark enforcement program. A federal trademark registration gives your enforcement program teeth. Recipients of cease-and-desist letters will likely take your claims of infringement more seriously if they are based upon a registered mark as opposed to a common law mark. Moreover, most online sales platforms require a trademark to be registered for the trademark owner to lodge an infringement claim against an infringing seller. Additionally, the legal presumptions baked into a federal registration, discussed above, can save you a significant amount of money in avoiding the expense needed to litigate those points.
- Provides confidence as you expand your business. A federal trademark registration provides you with nationwide rights which likely extend beyond the geographic area where you are using the mark. You can, generally, rely on those constructive nationwide rights to expand your business across a region or the entire country without fear of infringing a third party’s mark.
Because of the myriad benefits it affords, federal trademark registration is an integral part to most business’ branding and growth strategies. The trademark attorneys at Verrill have years of experience advising clients on federal trademark registration, building a trademark portfolio, and enforcing their trademarks. Contact us with any questions about federal trademark registration or to assist with your trademark matters.
The next part in this series will discuss trademark prosecution — the process of seeing an application through to registration.