One of the biggest trademark misconceptions is that you must register a trademark (with the U.S. Patent & Trademark Office) in order to get any trademark rights. That is not the case. Trademark rights are actually obtained by using the trademark in commerce. These are called “common law” trademark rights. However, trademark registration greatly expands upon those rights. You likely came here wondering “should I register my trademark?” In this post, I will explain some of the key benefits and protections you get with federal registration with the USPTO.
Geographic Expansion of Rights
Perhaps the biggest benefit that a trademark registration provides is the geographic expansion of your rights. By that, I mean that ownership of a federal trademark registration gives you the legal presumption of ownership of your trademark throughout the United States. Without registration, your common law rights are limited to the geographic area(s) where you regularly use the trademark in commerce. Of course, if you decide to expand or franchise your business, having access to use your trademark in new markets will be invaluable. Similarly, if you are an ecommerce business selling products online, you want to be sure that you can safely do so regardless of where your customers are located.
Selling Your Business
Perhaps you do not plan to expand or franchise your business. But have you thought of what you will do with the business when you retire? Even if you’re not currently thinking that far ahead, it is likely that you will sell your business someday. A trademark registration has tremendous value for any business. Potential buyers will view your trademark registrations as important assets.
Your registrations are like the insurance a buyer will want in order to ensure that the name and brand they are purchasing is secure. Therefore, the buyer will be willing to pay a higher price for the business purchase. Without a trademark registration, the risk of a trademark infringement lawsuit is greater. If they buy the business, but the business is later ordered to change its name as a result of an infringement suit, then they have lost much of the value from their purchase. However, purchasing a business with trademark registrations for its marks is much less risky.
Putting Others on Notice
Aside from securing your trademark rights, a federal registration can also be helpful in that it puts others on notice of your rights. New businesses can and should conduct trademark searches to ensure that they are not adopting trademarks that infringe on the rights of others. The USPTO database is the largest and most commonly used database new businesses can search for the trademarks of others. If you register your trademark, your registration will be viewable by others and should discourage them from adopting a trademark that is confusingly similar. This can save you the hassle of dealing with infringing parties later on.
Another benefit that a trademark registration gives you is the right to use the ® symbol with your mark. This lets other parties know that you have registered your mark with the Trademark Office. When used in combination with your mark, it also makes it easier to obtain monetary damages should you have to file a trademark infringement lawsuit.
Avoiding Infringement Issues
Having a federal trademark registration provides you with the legal presumption of ownership of the trademark, as mentioned above. This can be very useful if someone accuses you of trademark infringement. The registration also makes it easier to establish your “priority” in the trademark (in other words, it helps to prove the date on which you acquired rights). For federal trademark registration rights, your rights date back to the date your application was filed.
By registering your trademark you can put others on notice and hopefully prevent them from adopting a similar mark. In addition, registration of your trademark can also prevent others from registering confusingly similar marks. When the Trademark Office reviews an application, it will issue a rejection if the trademark is too similar to a trademark that is already registered. This may also persuade the owner to look into a different trademark altogether.
Are You Thinking “I Should Register My Trademark”?
If you are not sure whether it makes sense to register your mark, or if you have decided to register but need help, please feel free to call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
