You don’t need to register a trademark to establish and assert trademark rights in the U.S. Merely using a mark commercially so that consumers come to view the mark as identifying a source is enough to qualify for protection. So, given the prospect of enforceable unregistered rights (known as “common law” rights), why bother with federal trademark registration expense and effort? There are number of good reasons beyond the most obvious one – use of the ® symbol alongside your mark.
A federal registration would entitle you to a “priority date” (the application filing date) vis-à-vis potential competing trademark rights owners. The general rule in the U.S. for determining who owns superior rights in a dispute is the first to use wins, but there is an important exception for federal trademark application filers: the act of filing a trademark application, assuming that the application successfully advances to registration, establishes a priority date, a “stake in the ground,” so to speak, that otherwise would only result from actual use of the mark in commerce. The option of an “intent-to-use” federal trademark application allows you to put a stake in the ground while engaging in product and service development, and before actual use occurs.
Another federal registration benefit is that it results in a nationwide priority date. In contrast, common law rights are limited only to the geographic areas in which you are using your mark. There is a caveat: This “nationwide” principle does not mean that you automatically can bring a lawsuit against a subsequent user of a conflicting mark in a remote corner of the U.S. where your use has yet to occur. This principle does, however, mean that when your use expands to that remote area, you will be in a position to take action. Under this scenario your rights relate back to your federal application filing date, trumping the later user.
One compelling registration benefit arises in court. If you own a trademark registration, you enjoy an evidentiary presumption of valid, exclusive rights in the registered mark in relation to the products and/or services listed in the registration. That means that the burden is on the infringer to challenge and disprove your rights. Better yet, where a registration is more than five years old, the registration is considered conclusive evidence of a valid trademark right – which puts you in an even stronger position. In contrast, an unregistered trademark rights owner must make a robust evidentiary showing to establish the existence of enforceable rights, which is a threshold requirement for rights enforcement and often is costly.
Not sold? There are more benefits still: Federal registration means that your mark will appear in the U.S. Patent and Trademark Office’s (“USPTO”) trademark registry database, which can have a disincentive effect where others might adopt or apply to register a conflicting mark and encounter yours through database searching (as they should). Moreover, the USPTO might deny another’s attempt to register a conflicting mark based upon your registered mark. Finally, federal registration provides access to federal courts, and makes enhanced damages possible should you prevail in an infringement suit. While not every product name or service name merits registration, these benefits are compelling enough that businesses should strongly consider registration for their important brands.
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Branding and Trademark Series: Building a Brand
Patrick J. Concannon is a partner in Nutter's Intellectual Property and Corporate and Transactions Departments. Pat co-chairs the Trademarks and Brands practice, with over 25 years of experience devoted to helping businesses ...
Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.