The Importance of Registering Your Trademarks

March 20, 2015

Trademarks are highly valuable assets.  Developing and protecting trademarks is not merely a “cost of doing business,” but rather an investment in customer goodwill, leading to greater customer satisfaction and higher sales.  A trademark can be almost anything that distinguishes the goods or services of one party from those of another.  Trademarks also assure consumers of consistent quality and thus help promote efficient competition. 

Federal registration is not necessary in the United States because some common law trademark rights arise just by using a trademark in commerce.  However, there is a wide array of benefits to federally registering a trademark on the Principal Register.  First, registering your trademark discourages others from using confusingly similar marks in the first place by making the mark easy to find in a trademark availability search, thereby preventing problems before they even begin.  In addition the Trademark Office has a duty to cite prior registrations against applications for confusingly similar marks and to refuse to register such marks, thereby enlisting the power of the US Government in helping to prevent infringement of your valuable trademark asset.

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A federal registration treats the mark as if it is used nationwide as of the application filing date, which is vital in a system in which first use wins.  Otherwise, your common law rights are limited to the geographic area of use or reputation of the mark, potentially allowing others to use the same mark in another geographic area and leading to inevitable confusion when one or both parties expand.  Having a trademark registration also provides nationwide notice of ownership of the mark as of the registration date, preventing others from claiming their subsequent adoption of the mark was in “good faith.”

A trademark registration serves as evidence of the validity and exclusive ownership of the mark for the goods and services listed in the registration, with heightened protection after five years and the possibility of becoming “incontestable,” which can help not only in court proceedings but perhaps more importantly in quickly convincing others to cease using a mark without the need to go to court.  Owners of federal registrations have the right to use the ® symbol along with the right to sue in federal court and, in the case of counterfeiting, statutory damages relieving you from having to demonstrate actual damages in order to receive a monetary award. 

A U.S. registration also provides a basis for foreign registrations, facilitating protection of your marks worldwide as business expands.  In addition, the US Customs and Border Protection are empowered to block imports that infringe a federally registered mark, at no additional cost to you. 

Whether registered or not, a trademark should never be used in a generic sense to refer to your goods or services. Rather, the mark should be used to modify the generic noun, such as BAND-AID bandages. Otherwise, your mark may become an unprotectable part of the English language, a fate that befell the onetime marks CELLOPHANE, ESCALATOR, and ASPIRIN.