In the U.S., two different methods exist for developing and protecting rights in a trademark: through use (common law) and through registration. Generally speaking, a mark is used as a trademark when it is affixed to goods or used in the promotion or provision of services. However, many factors must be considered when determining whether use of a mark actually constitutes “trademark use,” and the nature and extent of any rights created by such use of a mark. Companies should think carefully before relying solely on use to secure rights in their marks, especially given the more limited protection provided under common law. Most companies benefit from registering their marks and should consider registration to provide the broadest and strongest protection for their marks and brands.

Before using or registering a trademark, however, a clearance search should be done to determine whether a proposed mark is available. Why is this important? Initially, it helps determine whether the mark is capable of registration or protectable as a trademark. It also helps to avoid a possible objection to the use and/or registration of the mark by another party. Selling products or providing services before conducting the necessary due diligence can expose a company to significant legal risk.

Once the due diligence process is complete, you should strongly consider federal registration to protect the mark. While trademark registration is not required to acquire trademark rights and may not be available in all instances, federal registration of a trademark provides significant advantages and benefits, including the following:

  • Deterrence & Prevention of Others: Registration discourages others from using confusingly similar or conflicting marks in the first place and can be used as a basis prevent the use and registration of confusingly similar marks by others.
  • Geographical Coverage/Nationwide Priority: Federal registration usually provides nationwide protection. Otherwise, your 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 expands.
  • Notice: The ® symbol may only be used in connection with a federally registered mark when the mark is used for the goods and services listed in the registration (unregistered marks may be designated by a superscript “TM”). This provides constructive notice that the mark is claimed as an exclusive right. It 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.”
  • Evidence of Validity: Federal registration serves as evidence of the validity and exclusive ownership of the mark for the goods and services listed in the registration. This can be helpful not only in court proceedings but can be helpful in quickly convincing others to cease using a mark without the need to go to court.
  • Federal Jurisdiction and Damages: A federal registration allows you to sue in federal court and, in certain cases, obtain statutory damages, treble damages, and attorney fees, thereby providing for potentially significant monetary recovery.
  • Customs Recordation: A federal registration allows U.S. Customs and Border Protection to block imports that infringe the mark or are counterfeits once the registration is separately “recorded” with Customs.

The benefits of trademark registration are many and the return on investment for trademark registration can be significant. Keep in mind, however, that some trademarks are not eligible for registration on the Principal Register, but can be registered on the Supplemental Register, which confers some, but not all, of the above benefits. Furthermore, some marks are not eligible for federal registration but may be registered at the state level. Our trademark attorneys assist clients in determining what type of registration is available and makes sense for their businesses.