By UpCounsel Intellectual Property Attorney Matt Googe

In an earlier article, I discussed important considerations around trademark disputes. One question that is often asked before any dispute arises is whether a trademark should be registered. Unlike a copyright, registration of a trademark is not required prior to pursuing a third party for potential trademark infringement. However, there are many important benefits bestowed upon a mark when it becomes federally registered. When deciding whether to pursue federal registration of a mark, it is important to understand some of the differences between your rights to a federal trademark registration versus common law rights.

Protection Under the Common Law

A trademark is a word, phrase, logo, or other symbol that identifies and distinguishes the source of goods of one party from another. Common law rights to a trademark can be based solely on use of the mark by a party in connection with that party’s goods or services. The scope of rights to that mark align with the geographic area in which that party uses the mark. For example, if the owner of a mark is a restaurant having a single location, the scope of those rights is likely limited to the immediate geographic area surrounding that location. On the other hand, if a party uses a mark in connection with online sales that span across the country, the geographic scope of that mark is likely broader.

Even though a mark may not be registered, that mark may be accompanied with the TM symbol anywhere that mark appears. The TM symbol may be used to provide notice to third parties that the owner of that particular word, phrase, logo, or symbol is claiming that term as a trademark. If a third party infringes the common law mark, the owner may have some recourse under federal and state law, but the burden will likely be on the party claiming common law rights to prove rights to that mark.

Federal Trademark Registration

Federal registration of a trademark provides many benefits to the owner of that mark that may not be available under the common law. Those benefits include:

  • Statutory presumption that the trademark is valid, that the listed registrant is the owner of the mark, and that the owner has the exclusive right to use the registered mark;
  • Proof that the trademark is a valid mark and has acquired secondary meaning;
  • Constructive notice of ownership of the mark by the registrant;
  • Entitlement to nationwide priority dating back to the filing date of the trademark application; and
  • Incontestability of the trademark registration after five years of continuous use.

In addition to the above benefits, there may be several other benefits associated with federal registration of a trademark. The trademark registration may bar the federal registration of similar marks at the U.S. Patent & Trademark Office. An owner of a federal trademark registration may use the ® symbol with the trademark to provide notice of federal registration of that mark. The owner of a U.S. federal trademark registration may use that registration as a springboard to the filing of international applications.

There are additional benefits to owning a trademark registration that fall outside of the typical benefits listed above. For example, a federal trademark registration may streamline the process of proving rights to a mark in a domain name dispute. Additionally, proving ownership of a mark with a federal trademark registration can simplify the process of requesting takedowns of infringing products on third party websites such as eBay and Amazon.

In sum, there are many benefits that accompany successful federal registration of a trademark. Registration of all words or logos in use by a party is rarely practical. Fortunately, even those marks are provided some level of protection under the common law. A trademark attorney can assist in identifying those marks that may most benefit from federal registration and assist in the process of registering those marks.

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About the author

Matt Googe

Matt Googe

Matt is a registered patent attorney with experience in the areas of trademark, copyright and patent law. He has worked in industries such as consumer packaged goods, sporting goods, aerospace technology, computer and mobile software, medical devices, composite materials, hazardous material handling, environmental remediation, firearms, pesticides, mechanical devices and electro-mechanical devices. He is a member of the State Bar of Tennessee.

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