Many people ask me, “Why should I bother to register my trademark?” While it is true that every user of a trademark has “common law” trademark rights, there are important advantages to registering your trademarks with the United States Patent and Trademark Office. In a previous blog post, we explored 3 reasons to register your trademark. Here are 3 more.
What is a Common Law Trademark?
A “common law” trademark is a trademark that is not yet registered with the patent and trademark office. Trademark owners get common law rights just by using their trademark. That’s right — just start using your trademark, and you have rights to exclusive use of that mark. But there’s a catch — you only get rights where you are actually using the trademark. So if you do business in California and Arizona, you have rights there, and there only. So that expansion you were planning on doing to Las Vegas? It might not be possible if someone else is using the same or a similar trademark for similar goods or services there. If you think you might want to expand to another state, then it’s probably a good idea to register your trademark.
So, why should you register, even if you aren’t going to be expanding your business in the near future? Here are three more good reasons:
Reason #4: The trademark office prevents registration of conflicting marks.
When you own a registered trademark, the Trademark Examiner will refuse to register any mark that is “confusingly similar” to yours. In essence, the Examiner acts as sort of a “trademark watchdog” over any marks that are in the trademark database. When an application is submitted for a trademark that the Examiner feels is likely to cause confusion in the mind of the consumer, the Examiner will refuse registration based on that likelihood of confusion.
Although the Examiner doesn’t owe a duty to any particular trademark registrant, the Examiner wants to make sure that any new marks won’t cause confusion as to the source of goods and services, so in order to keep the record tidy, they will refuse to register these infringing marks. All registrants should, however, police the database regularly for any applications for marks that are confusingly similar, so that they can oppose those registrations, if appropriate.
Reason #5: Intimidation value.
A registered trademark makes you look more serious when you confront naughty infringers. Without a trademark registration, all you can say is a wimpy, “Hey, stop using that; I was using that as a trademark first!” This is not a good negotiating position; naughty infringers have been known to go and file their OWN applications for the disputed mark, putting the alleged senior user who complained about the infringement in the first place on the defensive. When this happens, the senior user now is in the very uncomfortable (and expensive!) position to prove that he was the first user, and has the best rights to the mark.
When you are the owner of a trademark registration, you can confidently state, “I’m the owner of trademark registration number 5434834,” (I just made that up) “Cease and desist now, or I will haul you into court and sue your pants off.”
You may already have common law rights to that trademark in your state or area where you are using the mark, so why should you care about this? What if you want to expand? As mentioned above, if you want to expand to a new area, now you can’t — your competition now has better rights to your mark. Also, your competition may not know about you, and may start using your mark in your area. Want them to stop? Well, you may have to sue them. Did I mention how expensive trademark litigation is? All of this litigation and fighting over who owns what is easily solved, just by registering your trademark with the trademark office.
Reason #6: You get to sue for damages in Federal court.
With a trademark registration, you have a ticket to Federal court so that your trademark dispute can be adjudicated.
Without a trademark registration, you have to sue in state court in every state where your mark is being infringed. Wouldn’t you rather have all the issues litigated in Federal court, and settled once and for all? Yeah, I thought so. It’s much less expensive and complicated that way.
So the moral of the story is: Register those trademarks, and avoid the possibility of having to fend off competitors who want to file competing marks, and the necessity of fighting over your trademark later!
Contact Dallas, Texas trademark attorney Angela Langlotz today to get started on a trademark application for your valuable brand.