Why should I get a trademark registration?

 

Clients often ask me why they should bother with getting a trademark registration.  Heck, it’s a good question!  Do you have to have a trademark registration to get legal protection?  Or, is simply using the brand enough?   (As a quick preface, the answers to these questions are based SOLELY on U.S. law.  Believe me, things work very differently in other parts of the world.)  

In the U.S., you have have trademark rights in a brand as soon as you start using that brand in connection with a good/service in commerce.  Brand + goods or services + commerce = trademark rights.  So then, why register?

Here’s an important difference between “common law” rights (simply using the mark without a registration) versus having a registration: without a registration, your rights only extend as far as the reach of your brand.  With a federal registration, your rights are nationwide.  Let’s look at an example.  You are the purveyor of “Homework is Awesome” robots – small robots that will do your math homework for you.  (Come one kids, let’s dream big here.)  You’re bootstrapping, so right now you’re only selling your robots in “educational” (ahem, “toy”) stores in Washington, Oregon, and Idaho.  Without a trademark registration, you’ve only got rights to “Homework is Awesome” robots in those three states.  Someone in New York could start selling “Homework is Awesome” robots in Brooklyn and you’d have a tough time stopping them.  Now, with a federal registration, you get nationwide exclusivity to that brand.  See the difference?

Some other important reasons to register, per the United States Patent and Trademark Office’s “Basic Facts About Trademarks” guide:

  • Public notice of your claim of ownership of the mark;
  • Listing in the USPTO’s online databases;
  • The ability to record the U.S. registration with the U.S. Customs and Border Protection Service to prevent importation of infringing foreign goods; 
  • The right to use the federal registration symbol “®”;
  • The ability to bring an action concerning the mark in federal court; and
  • The use of the U.S. registration as a basis to obtain registration in foreign countries.

Got questions!  Drop me a line at ashley@emberip.com

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