Why Should I Register My Trademark?
I often get asked, “Why should I bother to register my trademark?” While it is true that every user of a trademark has “common law” trademark rights, there are important advantages to registering your trademarks with the United States Patent and Trademark Office.
Entrepreneurs are famous for playing “fast and loose” with the rules — it’s part of how we’re wired, right? We break new ground, forge new ways of doing things, and challenge old paradigms, which is why we’re successful. And let’s not lose sight of some basic, old-school things that we need to do to protect the intellectual property that we’re creating in our quest to change the world.
Many entrepreneurs rely upon their “common law” trademark rights, and forgo the formality of trademark registration, with the attitude, “I had it first, so it’s mine.” And while that may be true, a trademark registration confers important benefits on the owner, such as the certainty that the mark is legally presumed to be yours. While common law trademarks are cheap (it’s free, just use it!) they don’t allow for the sort of legal certainty that makes venture capital smile and think that you’ve got your stuff together.
What is a Common Law Trademark?
A “common law” trademark is a trademark that is not yet registered with the patent and trademark office. Trademark owners get common law rights just by using their trademark. That’s right — just start using your trademark, and you have rights to exclusive use of that mark. But there’s a catch — you only get rights where you are actually using the trademark. This can be especially important with brick and mortar stores, where a future nationwide expansion is planned. If you’re a brick and mortar business, and you do business in California and Arizona, you have rights there, and there only. So that expansion you were planning on doing to Las Vegas? It might not be possible if someone else is using the same or a similar trademark for similar goods or services there. If you think you might want to expand to another state, then it’s definitely a good idea to register your trademark.
So, why should you register, even if you aren’t going to be expanding your business in the near future?
Reason #1: You get nationwide rights to your trademark.
Even if you won’t be expanding your business right now, you might in the future — or you might sell to someone who wants to expand the brand. Without a federal trademark registration, your expansion plans could be cut short, and you could be forced to re-brand if a competitor is using your mark in your proposed area of expansion.
When you get a federal trademark, you get nationwide trademark rights. This means that even though you are currently using the mark in only two states, you get exclusive rights to that trademark in all 50. This is a great advantage if you don’t want to fight over your mark later, or re-brand when you find a competitor is already using a similar mark.
Reason #2: Your trademark is in the federal trademark database, so that other searching for similar marks can find it an avoid it.
Many people search the federal trademark database before deciding to file a trademark application. If you don’t obtain a federal trademark registration, however, your mark will not be in the database for people to find. This means that someone will do the search, and not finding your mark, think it doesn’t exist! They can then file and obtain their own trademark registration for your mark or a similar one, and then that trademark registrant is presumed to have better rights than you do to that mark.
You may already have common law rights to that trademark in your state or area where you are using the mark, so why should you care about this? What if you want to expand? As mentioned above, if you want to expand to a new area, now you can’t — your competition now has better rights to your mark. Also, your competition may not know about you, and may start using your mark in your area. Want them to stop? Well, you may have to sue them. Did I mention how expensive trademark litigation is? All of this litigation and fighting over who owns what is easily solved, just by registering your trademark with the trademark office.
Reason #3: Your federal trademark registration gives you the presumption that you have the best rights to your trademark.
When you register your trademark, you get the benefit of some legal presumptions that you don’t get with a common law trademark. For example, you are presumed to be the first user of that trademark, and therefore presumed to have the best rights to the mark. If someone else wants to prove otherwise, then they have to file a lawsuit with the Trademark Trial and Appeal Board to cancel your trademark. As you can imagine, that’s an expensive (did I mention that trademark litigation is expensive?) uphill battle for the person claiming superior rights to your mark. They have to find an attorney, gather evidence, pay for the attorney (did I mention that trademark litigation is expensive?), and prove that they were using the mark before you were, and that they have better rights to the mark than you do.
On the other hand, if you register your mark with the U.S Patent and Trademark Office, you get the “benefit of the doubt” regarding anything in your trademark application, including the date of first use of the trademark, the goods and services claimed in the trademark, and the fact that the trademark is being currently used in interstate commerce. It’s up to the challenger of your mark to prove otherwise, and that can be an uphill battle.
So the moral of the story is: Register your trademarks, and avoid the possibility of having to fend off competitors who want to file competing marks, and the necessity of fighting over your trademark later!
Contact Dallas, Texas trademark attorney Angela Langlotz today to get started on a trademark application for your valuable brand. I work with clients all over the world who want to protect their valuable brands.
