Filing a trademark application with the United States Patent & Trademark Office is an important step that companies can take in protecting their brand and their business. A federally registered trademark confers benefits that give the trademark owner several distinct advantages in using and defending it. Before getting into those benefits and advantages, let’s take a quick look at some trademark basics and the context in which we’ll be talking about a registered federal trademark versus other alternatives.
When you file your trademark with the U.S. government, you’ll go through several steps. Essentially, you’re 1) making sure that your desired trademark (or one close enough to be considered “confusingly similar”) isn’t already in applied for or registered by someone else, 2) providing examples of how the mark is being used in commerce, and 3) policing and protecting against any infringements once the mark is registered. It’s a much more complex process than can be explained in a few sentences, but those are the basics.
Now let’s talk about some other options that businesses choose (or default to) instead of a federal trademark registration – some of the benefits of federal registration are as compared to these other options. Option number one is a local (state) registration. That would typically be done through the office of the Secretary of State in the state in which you’re filing. State registrations are aimed at products or services that are sold or offered in just one. The second option that some businesses choose is not registering their mark at all. In the United States, the actual use of a trademark “in commerce” (even without formal registration) provides certain common law rights. As you’ll see below, neither of these options offers the full benefits or protection of a federal trademark registration. Let’s talk about what those benefits are.
Benefit of Federal Registration #1: Trademark ownership
A registration with the USPTO provides official documentation and the legal presumption of national ownership of a trademark. That concept of a trademark as a commodity that holds value is an important part of the benefits of registration. A company’s brand and/or logo – the main identifying factor associated with its products or services – often ends up attaining a monetary value in and of itself, aside from the actual service or goods that the company provides. When you look at a trademark in that light, with a tangible value assigned to it, the benefit of having a concrete registration and proof of ownership becomes even clearer.
Benefit of Federal Registration #2: Notice of ownership
A registered federal trademark provides two benefits of notification that can prevent some headaches down the line. Once your trademark is registered, it appears on the USPTO’s on-line trademark database, where anyone searching for similar marks will see it (and may even see it in a simply Google search). You also provide notice of registration to the public through your own usage of the small circled letter “R” attached to your mark once your filing is complete. Both of these official methods of notice give you the ability to deter most other individuals and/or companies who are considering using the trademark or something similar.
Benefit of Federal Registration #3: National protection
A state registration covers just that – usage within only that state. Not registering your mark at all also severely limits the geographic scope of the protection to which you’re entitled. Should you decide to grow your business to a larger geographic area – essentially an inevitability, especially when you consider the importance of online commerce – you may run into issues with similar marks potentially pursuing the same national growth and claims. A federal trademark gives you a stronger case should any such conflicts arise.
Benefit of Federal Registration #4: International implications
There are two main ways in which a registered U.S. trademark can help protect your brand in international situations. The first is through protection against imports of similarly branded goods from offshore manufacturers – goods that may well be actively and maliciously attempting to infringe on your brand. U.S. jurisdiction won’t cover the manufacture and distribution of those goods overseas, but it can prevent them from reaching potential customers in the United States, under the protection of U.S. Customs and Border Patrol. Second, a U.S. registration is a local basis for international registration, providing you the benefits afforded by other Trademark Offices overseas that you may choose to register with, while still guaranteeing the full protection of U.S. trademark law.
Benefit of Federal Registration #5: Greater advantages in court cases
Should you need to bring action against an infringing entity, a registered federal trademark gives you the ability to bring an action in federal court, and, walk into court with the presumption of validity – in short, you have the advantage in terms of burden of proof at trial. In certain cases, the fact that your trademark is easily identifiable and on the USPTO register may entitle you to treble damages (three times the proven damages) if there is a loss of business thanks to a violation of your trademark. You also gain the ability to pursue statutory damages rather than having to prove a concrete value of damages – a lessened burden on you and a greater chance of success in court.
As you can see, the benefits of a registered U.S. trademark are more than worth the effort of acquiring one. Regardless of the product or service you offer, it’s an invaluable step in protecting the success of your business.