Why Should You Obtain a Federal Registration for Your Trademark?
By: Jordan Meggison-Decker
There are many benefits to registering your trademark with the United States Patent and Trademark Office (USPTO). Choosing to obtain a federal trademark registration first and foremost means that you have the right to bring a lawsuit in federal court concerning the use of your trademark. Similar to the right to file a lawsuit is the fact that a federal trademark registration means that you carry the legal presumption of ownership of the mark and possess the right to use it – this can mean significantly lower costs associated with protecting or enforcing your trademark rights. Additionally, a federal trademark registration means that you are able to use the federal trademark registration symbol, that your mark will be listed in the federal database of registered and pending marks, and that you will have the option to register your trademark in programs that provide enhanced trademark protection, such as Amazon Brand Registry.
Does the current use of my mark provide me with enough protection?
The answer to this question, unfortunately, is it depends. Absent a federal registration, your trademark is protected through the common law of the United States. Under the common law, trademarks are protected on the basis of two factors: (1) first use of the trademark in commerce and (2) the use of the trademark in a particular geographic area. Let’s imagine that you decide to open up an auto repair shop in Des Moines, IA under the name of Bob’s Auto Shop. You are the first to use this name and logo in Des Moines. Soon enough, your auto repair shop experiences great success and your name is well known around town. You consider expanding to other parts of the country. When conducting market research into the auto repair shop scene in Minneapolis, you discover that another merchant is also operating in Minneapolis under the name Bob’s Auto Shop. Oh no! Is this merchant infringing on your trademark? Probably not. As long as the owner of the other auto shop didn’t start their shop in the same geographic area as you with knowledge of your use of the mark, your right to use the mark does not have priority over their right to use. Your right to use the mark will extend only to the geographic area where you were the first to use it in commerce. If you decided to start your shop in Minneapolis– you may then actually be infringing on their trademark!
As you can see from the example above, common law provides only limited protection for trademarks. In determining what geographic area a trademark might be protected in under the common law, courts will consider whether the mark is sufficiently known in a given area, how many sales are made in a given area, and whether or not a second user entering the market would be likely to cause confusion to the consumer. The better known the mark, the higher the volume of sales, and the higher the likelihood of confusion – the more likely your mark is to have protection in an area. However, without a federal trademark registration, this is a high bar to meet outside of your primary areas of sales. Luckily, a federal registration would protect your mark nationally!
Obtaining a federal registration for your trademark can reduce your risk of accidental infringement on another registered mark. In the case of an accidental infringement on your part, you could be required to pay legal fees, fines, and surrender profits obtained under the infringing mark if legal action was brought against you. In some cases, infringing users are also required to pay damages to the registered trademark owner. On top of legal fees and damages, the cost to change marketing materials, logos, and product names can add up quite quickly. With a federal registration, you are able to worry less about this headache. When you file a trademark application with the USPTO, an examining attorney will conduct a search of the trademark database and compare your application to currently registered marks. After conducting this search and comparison, they will cite any potentially conflicting remarks to you and your attorney and allow the opportunity for you to distinguish your mark from any cited marks.
Deterrence of Others
Registering your mark federally can go a long way in deterring others from using your mark or a mark similar to yours. When you register your trademark federally, you receive nationwide priority over any other person or company that may attempt to adopt your trademark in an area where you are actively using the mark. With this registration comes a listing in the federal database of trademarks, managed by the USPTO. This provides public notice to anyone who is searching for similar trademarks, and they will be able to see all the information that accompanies your trademark registration (date of registration, goods and services on your registration, etc.). After your mark is registered, you will be able to use the federal trademark registration symbol ® on your goods, which will, again, publicly show that you are registered with the USPTO. Additionally, once you have your certificate of registration, you can record your mark with the U.S. Customs and Border Protection, which will allow them to stop the importation of goods with a potentially infringing trademark.
Lower Cost of Enforcing Your Trademark Rights
In Chapter 15 of the United States Code, Section 1057(b) provides that a certificate of registration provides the owner with “prima facie evidence of the validity of the registered mark and of registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce or in connection with the goods and services specified in the certificate.” This means, if you ever have to go to court to enforce or defend your trademark rights, you do not have to specifically prove to the court that you own the mark and have the right to use it. You will avoid having to introduce large amounts of evidence to the court to satisfy the high burden of proof regarding ownership and use, which is a process that would significantly drive up the costs associated with the legal action.
Potential to Expand
Should you ever decide to expand the use of your trademark or expand your commercial presence, your federal trademark registration will give you a leg up. With the nationwide priority your registration gives you, you have the ability to use your trademark throughout the United States. Additionally, if you become interested in using your trademark internationally, you can use your US federal trademark registration as a basis for filing in foreign countries.
If you have any questions regarding your intellectual property, please reach out to Jordan Meggison-Decker or another attorney on our BrownWinick Intellectual Property team. We are here to offer trusted legal advice and add value to any transaction, including those with complex and novel issues. Special thanks to summer associate Becca Coleman for her assistance in the writing and research of this blog.