This is the second in a series about the essential benefits of having your trademark registered. One of the most compelling reasons to register a trademark is the group of exclusive rights it confers upon the owner.
Common Law Rights
Without registration, there are some trademark rights that are called “common law” trademark rights, but those rights are limited.
- They can be limited to a small geographic area.
- You can’t use them to bring a lawsuit for infringement in federal court and often not in state court.
- U.S. Customs and Border Protection can’t use them to stop importation of infringing goods.
- You can’t use that ® symbol with them; you can only use the TM symbol.
- It’s not as easy for others to find records of your use, so conflicting use of others is more likely.
- There’s no legal presumption you are the proper owner of the trademark rights.
State Registration
What about state business registration? The registered organizational documents for a corporation limited liability company, partnership or other entity don’t protect your business name as a trademark. That’s right. They do not offer any trademark protection. Most states don’t check their own trademark registry, let alone the federal registry, when registering a business formation. They may reject a name because it’s identical or too similar to a business already registered in the state, but that’s only in their list of existing businesses, not even in their own list of registered trademarks. For example, Illinois might register an LLC with the name Apple, but that wouldn’t give the owner any trademark rights and would obviously be an infringing name under many circumstances.
What about state trademark registration? It’s a good tool, and under certain circumstances, it’s the only kind of trademark registration available. Usually state registered trademarks provide the right to sue in state courts regarding infringement and allow a victorious party to receive certain financial damage awards in addition to forcing the other party to stop infringing, including attorney’s fees most of the time. Suing for infringement without registration doesn’t allow the extra financial recovery and is much harder to prove.
State registration of trademarks only confers the benefits of registration in the state in which the trademark is registered. Sometimes it doesn’t even confer those benefits throughout the entire state if the mark is only used in a certain part of the state. For example, in Illinois, if a mark is in use in Chicago, that doesn’t necessarily give the owner rights down in Southern Illinois near Carbondale, and vice versa.
If you’re engaged in regional or national business using your trademarks, that local, regional, or state level of protection is insufficient, and it’s cumbersome to register and maintain trademarks in multiple states. Also, states don’t usually search the federal register of trademarks, so they can and do grant registrations that infringe on a national brand.
State registration is appropriate, though, if you are using your trademark only within a particular state. In fact, if you aren’t using it outside of that state at all, you can’t get federal registration. However, There are many ways your mark may be used in what’s called “interstate commerce” despite your business being located only in one state. It’s important to consult an attorney about whether your use qualifies for federal registration. It’s also a really good idea, even if you’re only applying for state registration, to have your attorney do that thorough federal search, to make sure that your state registration doesn’t end up being essentially useless because there’s already a mark registered federally that’s similar or identical to yours for similar identical goods and services.
Federal Registration
All of this leads us to federal registration, which provides the best trademark rights. It provides the maximum legal protection for trademarks, granting the owner the exclusive right to use the mark nationally for the goods or services that represents. This means no one else can use a similar or identical mark that could lead to consumer confusion. If they do, they can be sued.
Following is a list of some of the specific rights and commercial benefits provided by trademark registration on a federal level.
1. The public is put on official notice of your registration of rights through the USPTO public trademark database. This creates a presumption against any infringement defense of lack of good faith or knowledge.
2. There is a legal presumption that your rights are exclusive throughout the country. Now, this can be challenged. For example, Burger King’s national franchise does have inferior rights to the Burger King name in Mattoon, Illinois. It has superior rights to everyone else in the rest of the country, but there was a Burger King preexisting in Mattoon, Illinois. This kind of situation does happen, but look at the vastness of the federal trademark rights they do have versus that little carve-out that they don’t.
3. You can use that ® symbol, which also puts the public on notice of your federal registration.
4. The USPTO will prevent others from registering an identical or similar trademark for identical or similar goods or services.
5. You can sue in federal court for infringement and counterfeiting and sometimes obtain triple damages and attorney’s fees.
6. You can use the registration as a basis for foreign country registrations.
7. You can record the registration with U.S. Customs and Border Protection, who can use it to try to stop importation of infringing goods.
8. you can use the registration to have infringing domains, social media handles, et cetera, taken down.
9. You can participate in sales platforms like Amazon brand registry.
10. Your mark becomes a more valuable business asset, which can bring more money in a sale of a business or in licensing that allows others to use the mark.
These are just some of the very important rights and benefits conferred by obtaining a federal trademark registration. That is a powerful list, worth every penny of the cost of obtaining and maintaining that federal registration.
Now that you’ve heard those benefits, can you imagine the peril of going without them? I talked about some of that in the “Avoiding a Busted Brand” episode, and I’ll talk about it more in future episodes. For now, you can see that having a trademark registered at the federal level gives your business and brand essential and powerful protection.
I can help you with all of that. Get in touch with me to discuss how I can help get your various trademarks registered federally and protected by those strong rights so worrying about your trademarks isn’t something on that list of things that has you worried at 3:00 AM.
Next time, I’ll be talking about “Clarity Amidst Chaos: Preventing Brand Confusion through Trademark Registration” as part three of this series on essential benefits of trademark registration.
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