Protecting Your IP: The Importance of Federally Registering Your Trademarks
Of course you want to protect your company’s intellectual property, since for most businesses it is some of the most valuable assets they hold. You’ve probably been told countless times that you need to “register your trademark.” Perhaps you haven’t been told WHY you should register your trademark. We’ve put together a short series of blog posts on why you should register your trademark, the common pitfalls during the registration process, and asserting your trademark rights, including opposing a trademark claim. Today’s post highlights the major benefits attached to federally registering your trademark with the USPTO.
Common Law Trademark Rights: No Registration Necessary
Trademark rights exist the minute you use a trademark “in commerce”—basically the first time you put your business’ name, logo, slogan, etc. in front of the public. These automatic trademark rights are considered common law rights, which means that the trademark rights are developed through use and are not governed by statute. Common law trademark rights have been developed under a judicially-created scheme of rights governed by state law.
The nice thing about common law rights is that they are automatic, i.e. you don’t need to register your trademark to establish these rights. Once you use the mark in commerce, you own the trademark and the common law rights associated with it, including the ability to exclude others from using your trademark. The downside is that there are limitations to your common law rights. Common law trademark rights are limited to the geographic area where the mark is used. For example, if you are a Washington business, marketing your business under a trademark in Washington, serving Washington customers, then you cannot restrict the use of your trademark in New York. If the New York company tried to use your trademark to sell to customers in Washington, then there would be trademark infringement. Where it becomes a little trickier is for businesses that market their goods or services through the internet, since they are technically broadcasting their trademark to the world. However, generally your common law trademark rights extend only to those locations where you actually do business, i.e. where you can substantiate use of your mark by showing actual sales to customers or clients in the various locations.
As you can tell, these common law trademark rights are somewhat limited. And this is why we often recommend to businesses that they register their trademarks federally.
Registering Your Trademark with the USPTO
Filing for federal registration with the United States Patent and Trademark Office (USPTO) offers numerous benefits to a trademark owner at a fairly reasonable price. One of the most important advantages to registering your trademark with the USPTO is the scope of protection for your mark. Once registered federally, you have the exclusive right to use your trademark across the U.S. This exclusive right is attached regardless of where you market your business and where you actually use your trademark. Other benefits include: (a) the right to sue for infringement in federal court; (b) the ability to recover lost profits, damages, attorney fees and costs for infringement; and (c) the right to use the ® symbol, which puts the world on notice that your trademark is federally registered and potentially deters infringement.
Further, federal registration makes it easier to prove your case against an alleged trademark infringer since it provides substantial evidence of trademark ownership and use.
One the nicest things about registering your trademark with the USPTO is that it does not break the bank. We know the importance of managing a lean budget for startup businesses, and fortunately it only costs a few hundred dollars in filing fees to register your trademark. Registering your trademark upfront can save you thousands of dollars in legal fees and court costs if you are required to defend your trademark rights or sue a competitor for using your trademarks in the future.
If you’re unfamiliar with the trademark registration process, I’d advise talking with an attorney prior to taking on the application process. The application process involves an extensive search and classification process, which if done improperly can leave you with a denied trademark application and no ability to recover your filing fees (which are generally non-refundable). We’ll discuss the common pitfalls during the application process in next week’s post.