Federal Trademark Registration | Verrill

Is your brand registered? Should it be registered? Why should you register it? What should you do? What does the process look like? Can you do it yourself or do you need to hire a lawyer? These are just a few of the questions that business owners face when considering registering their trademarks and using them. In this two-part overview of federal trademark registration, we answer these frequently asked questions. This part focuses on the legal and business benefits of registration.

A little background and vocabulary

When people refer to “trademark registration,” they usually mean registering a trademark with the United States Patent and Trademark Office (USPTO), the agency that oversees federal patent registration. and brands. As is clear from the context, this discussion is limited to trademark registration in the United States.

Many people assume that in the United States you need a trademark registration to have trademark rights. This is not the case. The United States is what is known as a “first to use” jurisdiction, as opposed to a “first to file” jurisdiction. This means that all you need to do to acquire trademark rights is to use the mark in connection with your goods or services. That’s it. These unregistered trademark rights based solely on use are called “common law” rights.

Benefits of Federal Trademark Registration

However, you can go further in your protection. A federal trademark registration offers several advantages. Think of it as armor worn over your already established common law trademark rights.

Legal benefits

  • Presumption of Validity of the Mark, Your Ownership of the Mark, and Your Exclusive Right to Use the Mark. A federal trademark registration carries the legal presumptions of validity of the mark, your ownership of the mark, and your exclusive right to use the mark. In federal litigation, the registration certificate serves as proof of these points and eliminates the need for detailed evidence proving that you own the mark. The owner of an unregistered trademark, on the other hand, must devote significant resources to establishing these points to support their trademark infringement action.
  • Constructive national use. As stated above, you acquire common law rights once you start using a mark in connection with your goods or services. These common law rights, however, are limited geographically to where you use your mark — that is to say, sell your goods, or render your services under the mark — and your ability to enforce those rights is limited to that same limited geographic area. A federal trademark registration creates rights throughout the United States and its territories, even in areas where you are not currently using the trademark in connection with the goods/services covered by the registration. This provides you with a powerful enforcement tool and a deterrent to potential offenders.
  • Public notice of your trademark rights. Federal trademark registrations are listed in the USPTO’s Database of Registered and Pending Trademarks (that is to say, filed but not yet registered). This readily available information provides public notice of your trademark claim. Anyone viewing your trademark file in the USPTO database will see not only the trademark but also the goods and/or services covered by the registration, the date you applied for registration of the trademark, and the Registration Date.
  • Right to Use Federal Registration Symbol ®. Once your trademark is registered, you can use the federal trademark registration symbol ® with your trademark (as opposed to ™, which is the only symbol you can use in connection with common law trademarks). This shows the public that your trademark is federally registered, and it can be an effective deterrent against potential infringers.
  • Ability to register registration with US Customs and Border Protection. Once you have registered your mark, you can file the registration with US Customs and Border Patrol. This will help stop the importation of counterfeit goods and goods with counterfeit marks.
  • Using US registration as the basis for obtaining registration in foreign countries. You can use your federal registration as the basis for applications filed abroad. (We’ll discuss foreign trademark lawsuits in a separate article.)

Business Benefits

  • Increases the value of your brand and your business. Trademark filings – both in the United States and around the world – are part of the valuation of your business and their value increases over time. If you ever plan to sell your business or take on investors, you will be asked if your marks are registered and where. The stronger your brand portfolio, the more valuable your business and the more attractive it will be to potential buyers and investors. More generally, building a strong brand brings significant value to your business and provides an excellent return on investment. A trademark can be an effective marketing tool and can help build lasting relationships with customers.
  • Establishes a stronger trademark enforcement program. A federal trademark registration gives your enforcement program some teeth. Recipients of cease and desist letters are likely to take your infringement claims more seriously if they are based on a registered trademark as opposed to a common law trademark. Additionally, most online retail platforms require a trademark to be registered so that the trademark owner can file an infringement claim against an infringing seller. Additionally, the legal presumptions built into a federal registration, described above, can save you a lot of money by avoiding the expense of arguing these points.
  • Gives you confidence as you grow your business. A federal trademark registration gives you nationwide rights that likely extend beyond the geographic area where you are using the trademark. You can usually rely on these constructive nationwide rights to expand your business in a region or across the country without fear of infringing on someone else’s trademark.

Due to the myriad of benefits it offers, federal trademark registration is an integral part of most businesses’ branding and growth strategies. Verrill’s trademark attorneys have years of experience advising clients on federal trademark registration, building a trademark portfolio, and enforcing their trademarks. Contact us with any questions regarding federal trademark registration or for assistance in your trademark matters.

The next part of this series will deal with trademark prosecution – the process from seeing an application through to registration.

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