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Federal Trademark registration is very important and should definitely not be overlooked by any brand.  

A trademark’s main purpose is to identity the origin of ownership of the article to which it is affixed.  Essentially what this means is that a trademark is used as an identification sign to distinguish goods or services from those of a competitor.

Filing for federal trademark protection, even proactively, is important if a business plans on selling, marketing, or offering goods or services under that name because federal trademark registration gives one legal rights.

Below are the top 10 reasons why it is important to federally register trademarks for any brand regardless of industry, size, or value.

1. Easily Stop Competitor: 

If you do not federally register your trademark with the United States Patent and Trademark Office (USPTO) that means absolutely anyone else can.  This will immediately put your brand and any product or service development you are partaking in at risk.  But when you secure a registered trademark it will protect your brand, and will provide you will superior legal rights against someone who is using a similar mark and attempting to profit off of your brand’s reputation and goodwill. Moreover, by federally registering your brand’s trademark you are within your rights to take actions against other parties who attempt to copy or use your federally registered trademark. Ultimately by registering a trademark you build a barrier to entry around your brand –which makes it harder for other brands to imitate you.

2. Exclusive, Nationwide Protection

A federally registered trademark gives constructive notice to the public of your claim of ownership of the trademark.  What this means is with federal trademark registration, there is a legal presumption of your trademark ownership.  And most importantly a federally registered trademark gives you the exclusive right to use your trademark nationwide in connection with the goods and/or services listed in the registration

Also if you would like to eventually expand your business internationally, a federal trademark registration can help you obtain registration in foreign countries.

3. Register with Customs and Border Control

Federal trademark registration gives the trademark owner the ability to file the Federal Trademark Registration with the U.S. Customs Services to prevent the importation of infringing foreign goods! Customs will then be on the lookout at our borders and ports for counterfeit goods and infringing uses of the trademark.

4. Automatic Right to Sue in Federal Court

With a federal trademark registration you can bring an action concerning your trademark in federal court.  (Which is vital if you want to enforce your trademark rights.)  Because without federal registration, your rights are limited to areas in (1) where you use the trademark, or (2) where the trademark has actually been used.  For example, if you only obtain a California trademark, you cannot send a cease and desist letter to a business that is using the same name in Texas.  Your protection would be limited to California.   Overall, suing in federal court usually provides more opportunities for enjoining an infringer’s use and for potentially obtaining damages and attorney’s fees.

5. Quicker and Cheaper Resolution of Disputes

If someone infringes your trademark, a simple “cease and desist” letter featuring a registered trademark is much stronger, and much more likely, to lead to a quicker and cheap[er resolution with positive results.

6. Easily Protect your Online Identity (Domain Name & Social Media)

Federal Trademark protection helps to stop people who want to use your trademarked name as a domain name, or for their username, handle, or account on certain media platforms like Facebook, Instagram, Twitter, and YouTube.  In the event that someone signs up with your trademarked name as their handle or account, with federal trademark registration you will be able to avail yourself to the social media website’s trademark infringement resolution process.  You will likely have to provide relevant trademark registrations but that won’t be a problem if you are federally registered.  Because with federal registration you can easily receive copies of your federal registration certificate and a link to the corresponding record in the USPTO’s online database.

7. Ability to Use ®

When explaining the significance of ® it is best to start with explaining the difference between ™ and ®.

Trademark ™: A ™ is to be use by those who have not registered their brand name with the USPTO.  A ™ signifies common-law rights in a trademark and is used to protect an unregistered mark.  However, the ™ does not guarantee that the owner’s mark will be protected under trademark law.  

Federally Registered Trademark ®: A ® signifies that a trademark has been registered with the USPTO, and the symbol can only be used after the USPTO successfully registers the mark.  Federally registering a trademark gives the trademark owner superior rights over others in the U.S. to use the registered mark in the particular goods and/or services the mark was registered for, and it provides the trademark owner the ability to obtain treble damages against infringers.  Moreover, also provides the trademark owner a strong presumption of ownership in the courts.  Because a registered ® trademark is much more preferable over an unregistered ™ trademark in the eyes of the law.  Overall, the ® looks official (because it is), and will help ward off potential infringers.

8. Make it Easier for Customers to Find you

Consumers purchasing decisions are definitely influenced by a brand’s reputation. The marketplace is very crowded and it can be hard for consumers to distinguish your brand from your competitors.  Trademarks make it easy to capture customer’s attention and make your brand stand out.  In 1916, the Supreme Court of the United States said it best:

“The protection of trademarks is the law’s recognition of the psychological function of symbols.  If it is true that we live by symbols, it is no less true that we purchase by the.  A trademark is a merchandising short-cut which includes a purchaser to select what he wants, or what he has been led to believe he wants.”  

Trademarks help enable consumers to quickly identify and make a purchasing decision based on a recognized mark.

9. Add Value to your Brand

Overall, trademarks are one of very few assets that can provide a trademark owner a long-term competitive advantage.  And trademarks are generally the only asset that can appreciate over time.  Protecting your brand as a trademark gives you an intellectual property asset that can be separately bought and sold along with goodwill. This will help your business make more money in the future should your business grow or if you later decide to sell your business, create franchises, or license your brand to others.  Overall, trademarks are leverageable–meaning that they provide value beyond core of what brand and can easily pave the way for expansion (or even acquisition, if desired) of the brand.

10. Trademarks Never Expire

Trademarks never expire unless you want them to.  Unlike other forms of intellectual property, trademarks last forever.  However, you must submit maintenance documents with the USPTO in order to keep your trademark alive.  The term of a federal trademark is 10 years, with 10-year renewal terms. Although, the USPTO requires that between the fifth and sixth year after the date of registration, the registrant must file an affidavit stating that the mark is still in use. Thus, trademarks can list indefinitely as long as the trademark owner continues to use the mark in order to identify its goods or services.  

 

**BONUS REASON**

The USPTO’S Trademark Certificate of Registration is very official. (And very cool!)  It looks really great framed on a wall.


This article presents the views of the author and do not necessarily reflect those of LegalForce RAPC or its clients.  The information presented is general information and for educational purposes.  No legal advice is intended to be conveyed; readers should consult with legal counsel with respect to any legal advice they require related to the subject matter of the article.

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CHELSEA WOLD, is a law clerk for LegalForce RAPC. She received her Juris Doctor degree from Sandra Day O'Connor College of Law, Arizona State University in May 2016. On the personal side, Chelsea has her own blog that she started as a journalism major in college.

2 COMMENTS

  1. I have a question about a brand name I’m considering. It’s in the same class as the brand Abreva. I want my brand to be Abriba. Do you see potential issues because they are similar? But not pronounced or spelled the same way?

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