Should I Register My Trademark?
Business owners often ask me if they should “trademark” the name of their business. The good news for many of them is that they already have a trademark. There is no such thing as “trademarking” your company’s name. When you choose a name under which you will provide a particular good or service, you are adopting a trademark. In the U.S., you obtain rights in that trademark by using the mark in commerce in connection with the sale of goods or services. You do not have to register your trademark to have rights in it.
So, why should you register your trademark?
Well, registration enhances the rights already granted to you by virtue of using your mark. A trademark can be protected by state, federal and common law; however, protection under common law is limited, so many trademark owners will benefit from registering their mark with the state or federal government (both domestically and internationally).
Although state registration is usually less expensive, most trademark owners get the most benefit of federal registration. Here’s why:
- National Priority Rights. An owner of a federally registered trademark will be presumed to be the exclusive owner of that trademark in connection with the goods or services listed in its registration and will have nationwide priority over every other user who has not yet adopted the mark. This is important for businesses who sell products through a website and/or to customers in different states.
- Incontestability. When a mark has been in continuous use for five years after registration, it may be classified as “incontestable” or immune from legal challenge. This means third parties will be cut off from challenging the validity of your mark and your registration may only be canceled for very limited causes.
- Sue in Federal Court. Having a federal registration allows you to bring an action in federal court when you need judicial help enforcing your rights.
- International Rights. A U.S. trademark registration allows you to obtain international trademark registration in certain foreign countries. If you plan to expand your business beyond the U.S., it would be much easier to obtain trademark protection in certain foreign countries if you already own a U.S. registration.
- Protection on the Border. A federal registration also allows you to record that registration with U.S. Customs and Border Protection to prevent importation of infringing or counterfeit goods.
- Use of the Circle-R Symbol. Once you receive a federal registration, you have the right to display the federal registration symbol ®, which is a good warning to potential competitors to stay away from your mark when selecting their own marks.
- Public Notice. Your federal registration will be listed in the United States Patent and Trademark Office’s (USPTO) publicly accessible online database. This listing notifies third parties that your mark is registered which will hopefully prevent them from filing for registration of a mark that is similar to your mark. This should save both of you some legal hassle.
- Help from the Government. Having a federal registration will lead the USPTO’s Examining Attorneys to refuse applications for registration that are confusingly similar to your registered mark.