Why Register? Top Reasons to Register Your TM With the USPTO

Apr 7, 2016 | burgs | Business, Trademarks | No Comments

Please follow and like us:

20

In my last post, I wrote about common law trademark rights and the limitations on such rights.  If you have begun using your mark in commerce as a source identifier for goods or services, you do have trademark rights in the mark, but those rights are very limited.  How can you expand those rights nationally?  Easy!  Register your mark with the United States Patent and Trademark Office.  Registration has a number of benefits:

1. Whereas your common law trademark rights protect only a limited geographic area (and therefore may not discourage someone from using a similar mark outside of your territory), a registered mark is given national protection.  Your mark has “constructive” nation-wide use as of your application date, even if you are not selling goods or services nation-wide.
2. The USPTO will not register marks (after yours, assuming it is the first to be registered) that are confusingly similar to yours in the same/similar category of goods/services- in effect, the USPTO continuously offers some protection to you for your mark, on your behalf.
3. A registered mark allows the owner to place the ® symbol next to the mark wherever used, giving any potential infringers notice that the mark is registered with the USPTO.
4. Allows you to sue an infringer in federal court and to obtain money damages (i.e, not just the ability to stop the infringement from happening), including the infringer’s profits, damages, costs, and, depending on the circumstances, treble damages (3x multiplier of damages) and attorney’s fees.
5. Federal trademark law is generally fairly well decided, whereas common law trademark rights are based in state law and therefore involve less predictable outcomes in litigation.
6. A mark registered with the USPTO can serve as the basis for a foreign trademark application.
7. If your mark is registered, you can also register it with the U.S. Customs and Border Protection to stop importers from importing goods with a potentially infringing mark.

These are just a few of the biggest benefits of federal trademark registration.  In any event, it is a good idea to perform a clearance search and register your trademark as soon as possible if registration is feasible.  The cost to do so vastly outweighs the potential costs down the road if you elect not to.

Please follow and like us:

20