It has come to my attention that seemingly a lot of trademark lawyers have been telling their clients that they “have” to register their trademark to protect it. Of course, federal registration is certainly helpful in protecting your mark.
But is is necessary?
The answer may surprise you, but it’s not necessary to register your trademark with the United States Patent and Trademark Office (USPTO) to protect your mark against infringement.
Under U.S. law, you gain trademark protection once you have used the mark “in commerce”. This is often referred to as a common law trademark. You can use the “TM” indication (or “SM” for a service mark) after your mark at any time after beginning to use it in commerce (though you can only use the ® mark once you have a registered mark with the USPTO).
So, why do people register their marks with the USPTO then?
Well, for one, common law trademarks have some very serious limitations.
First, common law trademarks are only good in the geographic area in which they’ve been used. So, if you have a chain of drugstores in New Jersey called “Moose Drugs”, you’d only be protected in the market that you’re working in.
If someone in Oregon opened a “Moose Drugs” in Oregon (assuming they had no knowledge of your chain of stores), that’s fine. The only time that there’d be a problem is if the Oregon “Moose Drugs” went nationwide. They’d be prevented from entering the New Jersey market by your prior use of the mark, but that’s all.
On the other hand, federal trademarks registered with the USPTO are protected nationally.
Second, common law trademarks are very hard to search for. There is no general databse of them (as there is for a federal or even a registered state mark). This means that it is far more likely that someone will unknowingly violate your mark. And chasing people off of your mark can get very expensive.
Because federal trademarks are contained in the federal database, innocent infringers are far less likely and there are, with any luck, far less people to sue to protect your mark.
Finally, there are rights that are available for federally registered trademarks that aren’t available to common law marks. Other than the rights that I’ve mentioned above, these include:
* The right to trial in a federal court (which enables you to reach infringers in other states);
* The right to recover profits, costs, attorneys’ fees and damages from infringement;
* In some cases, the right to recover treble (triple) damages;
* Prima facie proof that your mark is a valid mark and is not “confusingly similar” other marks;
* The right to have U.S. Customs block entry of any goods bearing an infringing mark; and
* After five years of registration, you gain an “incontestable” status on your mark, which eliminates almost any argument that you do not have exclusive rights to use the mark.
That’s certainly worth the price of admission.
So, what do I advise my clients?
I advise them to register for a federal trademark if they can afford to do so (since I do flat fee registrations, it doesn’t end up being particularly expensive).
But I let them know that it’s not the end of the world if they don’t. Because it’s not.
