Am I Required By Law to Register My Trademark?

By Josh Gerben, Esq.

The federal law in the United States which governs trademarks (known as the Lanham Act) has rather stringent legal rules regarding trademarks: how they’re used, how they’re monitored, how they’re protected. One stipulation that the law does not have, however, is a strict requirement to register your trademark with the United States Patent and Trademark Office (the “USPTO”). You are entitled to certain protections, rights, and privileges simply through the establishment and use of your trademark in commerce. While you’re not required to register your trademark with USPTO, you do gain a host of advantages and additional protections if you do.

Therefore, even though you’re not required by law to register your trademark, it’s highly recommended that you do so. Let’s take a look at why.  The following are some of the protections that you do get from an unregistered trademark, and how they compare to the more extensive privileges of use you’re entitled to through federal registration.

Reason #1 to Register a Trademark – Local vs. National Protection.

Once you begin using a trademark “in commerce” (watch this video to understand the “use in commerce” requirement), even if it’s not registered, it gains local protection – meaning only in the area in which you’re selling or offering the product or service. So if another business tries to offer a similar commodity with a similar name in the same area, you have a strong legal case to get them to stop.  In most cases that protection doesn’t extend to other geographic regions, though, so if a competitor elsewhere has a similar name, you may find it difficult to have  a legal case to stop their usage of the trademark.  You gain a great deal of leverage by filing your trademark with the USPTO. Registration automatically gives you national protection, a stronger case, and the presumption of national ownership should another party, regardless of location, attempt to claim infringement against you.

Reason #2 to Register a Trademark – Ability to Sue in Federal Court and Register with Customs (against domestic or foreign companies).

With an unregistered trademark, you may be entitled to bring an infringement case to federal court, if you can meet certain requirements. Some of these requirements are difficult to meet, and, therefore, you may be forced to take action in state court.  If you have a federally registered trademark with the USPTO you automatically have the  right to sue in federal court, and, potentially recover damages incurred due to an infringement.

Moreover, in the case of counterfeit goods shipped from overseas – a common problem for products ranging from jewelry to clothing and beyond – you are required to have a registered federal trademark in order to request protection and action by Customs and Border Patrol (CPB).

Reason #3 to Register a Trademark – A Nationwide Deterrent.

With an unregistered trademark, other businesses with a similar name are unlikely to know about your mark unless you notify them. That means that they’ve already started doing business, and may have even started registering their mark. In any case, there’s a greater burden of proof of priority on you with an unregistered mark. A federally registered trademark serves as national notice of its existence – it becomes listed on the USPTO Principal Register and shows up in searches done by new companies, their attorneys, and/or USPTO examiners. Not only are new companies unlikely to attempt to register a mark already listed, but if they do, the USPTO examining attorney will reject it, signaling to the potential infringer that they should consider changing their name.

Reason #4 to Register a Trademark –  Implicit Proof of Validity.

An unregistered trademark gains protection through usage – but only if it’s a valid mark. We talked about those standards in other posts– uniqueness, use in commerce, and so on. The problem with an unregistered mark is that unless you’re an expert in trademark law, you can’t quite be sure that it meets the standards of being a valid trademark under the Lanham Act.  The only way to be truly sure of the validity of your trademark is by filing an application for registration of the trademark with the USPTO. With an unregistered and unproven mark, the burden of proof lies on you to prove a trademark right exists should another party try to infringe on your name. You’ll need to prove continuous use in commerce, for instance, and may be faced with questions as to whether your mark is distinct enough to qualify for protection. With a registered trademark, the proof is right there in the registration – you are provided with the national presumption of owners of your trademark.

It’s never too late to register a trademark, and here at Gerben IP, we have plenty of experience helping businesses gain full protection by registering previously unregistered marks. Common law protections only go so far, and obtaining the benefits of a federal trademark registration can be extremely valuable for any business.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.