Key Takeaways

  • Registering a trademark provides nationwide legal protection and exclusive rights to use your brand in commerce.
  • Federal registration creates strong presumptive ownership and eliminates common-law geographic limitations.
  • Trademark registration enables enforcement through federal courts, customs recordation, and deterrence of infringers.
  • Registered trademarks can become “incontestable” after five years, preventing key defenses in infringement cases.
  • Registration helps businesses expand internationally, access statutory damages, and enhance overall brand value.

Trademark Registration: Introduction

Wondering why register trademark? If you want to have a successful business, you'll need to protect your intellectual property. Warren Buffett, a successful investor, has referred to successful companies as figurative castles with moats that can't be breached. In that metaphor, the castle signifies the service or product, while the moat represents the ability of the business to create and sustain a commercial advantage in a market with a lot of competition.

Protecting your intellectual property is a critical aspect of defending your idea and product from competitors. The global market is expanding rapidly, thanks in large part to the accessibility of items online. The internet is full of knock-off and counterfeit items, so trademark protection is the only way to prevent this from happening to your business.

A trademark refers to a symbol, image, logo, or other mark that sets your services or goods apart from those offered by your competitors. A trademark can also be a sound, shape, or color, although these are less common. Not only does a trademark define where the goods or services came from, which represents the quality of the item and gives accountability to that business, but it also builds the brand image. This image can attract customers through advertising, marketing, and presentation efforts.

When you register your trademark, you can take advantage of the peace of mind that comes with protection. No legal requirements exist for companies to register trademarks, but without proper registration, your business will lose out on the maximum protection. As a service or product becomes more popular and successful, the trademark holds its own value as well. As you seek investments for your business, those you solicit will consider whether you hold enough protection on the brand from a legal standpoint.

According to The U.S. Patent and Trademark Office (USPTO), a company's trademark holds protection when it is in use, as long as it doesn't infringe on another registered mark.

Federal vs. Common Law Trademark Protection

While a trademark begins gaining some protection through common law when it is used in commerce, these rights are limited to the geographic area where the mark is actually used or recognized. This means another business in a different region could adopt a similar mark in good faith and even secure superior rights in their territory.

By contrast, federal trademark registration with the USPTO expands your rights nationwide. Once registered, your mark provides constructive notice to others, preventing competitors from claiming ignorance of your ownership. This federal status also gives the registrant the ability to sue infringers in federal court, where consistent precedent and remedies are available.

Benefits of Having a Registered Trademark

When you register a trademark, the amount of protection it holds will increase. Additionally, registration deters competitors from copying your trademark and affords you legal protection that will hold up in court if someone does infringe upon the mark. One benefit is greater protection. When you register a trademark, this action typically protects your business's logo or name, which can be one of the most valuable assets. The owner of the trademark holds protection across the entire nation.

Should you choose not to register your mark, you could later find that another company is already using a similar business name or logo. This problematic situation often results in the need to redo all signage, business cards, advertising, stationery, and other printed materials. Although there is some protection in common-law trademark laws, it is much more challenging, time-consuming, and expensive to take legal action against a competitor for a mark that hasn't been registered. 

If your business was using a name that already exists, you could end up having to change your registered domain name as well. Changing the name of a business due to trademark infringement is confusing to your customers and may deter them from using your business. Additionally, you might lose the right to expand your business without taking proper steps to register the trademark.

With trademark protection, you hold all legal rights and can take legal action against anyone who uses the mark. Those who do so are presumed to be infringing willfully, which means you could receive monetary damages for any losses during the period in which they were using your trademark. When you register your mark, the likelihood of someone else trying to claim infringement is much lower.

In the past, business owners often had to hurry to get their products to market in order to claim trademark protection, since the USPTO required the mark to be in use to qualify. If another business were to sell a product even just a day or two ahead of your business, it would have beat you to market and would hold the rights to trademark protection.

However, the USPTO now allows business owners to file an application for intent to use. If this application is approved, you will hold the same trademark protections as long as you submit proof of actual use of services or goods that display the mark.

Risks of Not Registering a Trademark

Failing to register a trademark leaves your business exposed to several risks:

  • Loss of Rights: Another company could register the same or a similar mark first, blocking your use—even if you used it earlier.
  • Costly Legal Disputes: Challenging another’s registration can cost tens of thousands of dollars in legal fees, and during litigation, courts presume the registered owner’s rights are valid.
  • Injunctions and Damages: Unregistered users risk lawsuits, injunctions prohibiting use of their brand, and monetary damages for infringement.
  • Brand Confusion: Without registration, competitors may adopt confusingly similar marks, weakening your brand identity and customer trust.

Business and Financial Advantages of Registration

Beyond legal protection, trademark registration offers substantial business and financial benefits:

  • Exclusive Rights & Presumption of Validity: Federal registration provides a presumption that the registrant owns the exclusive right to use the mark nationwide, making enforcement faster and less costly.
  • Right to Use the ® Symbol: Only registered trademarks may display the ® symbol, signaling authenticity and professionalism to consumers.
  • Public Notice of Ownership: Registration serves as public notice of your claim, reducing the likelihood of accidental infringement.
  • Licensing and Investment Appeal: Investors and licensees are more likely to engage with a business that owns federally registered marks.
  • International Expansion: A U.S. registration can serve as a basis for seeking trademark protection abroad, simplifying global brand growth

Expanded Legal Protections and Remedies

Federal trademark registration gives businesses significant legal advantages that go well beyond state or unregistered protection:

  1. Nationwide Rights: A registered trademark ensures ownership across all U.S. territories, not just where the mark is used locally.
  2. Federal Jurisdiction: Registration allows the trademark owner to bring infringement actions in federal court, providing more predictable outcomes and access to federal statutory damages.
  3. Evidentiary Advantages: A federal registration certificate serves as prima facie evidence of ownership and exclusive rights. After five years of continuous use, the mark can become “incontestable,” eliminating defenses such as lack of distinctiveness.
  4. Customs Recordation: Trademark owners can record their registration with U.S. Customs and Border Protection to block counterfeit or infringing goods from entering the country.
  5. Deterrent Effect: Registered marks appear in USPTO databases and are likely discovered during clearance searches, discouraging others from adopting similar marks.

Trademark Registration and International Protection

A U.S. trademark registration also provides strategic benefits for international business. It can serve as the foundation for registering your mark in other countries through systems such as the Madrid Protocol. This makes it easier to protect your brand globally without filing separate applications in every jurisdiction.

Foreign registration based on a U.S. application can also enhance your ability to prevent counterfeit imports and expand e-commerce operations safely. For growing businesses with international reach, this step can be a critical part of long-term brand strategy.

Frequently Asked Questions

  1. Do I need to register my trademark to have rights?
    No, but unregistered marks only offer limited protection under common law. Federal registration ensures nationwide rights and legal presumptions in your favor.
  2. How long does trademark protection last?
    A registered trademark can last indefinitely if you continue to use it and file periodic maintenance documents with the USPTO.
  3. What’s the difference between ™ and ®?
    ™ can be used for unregistered marks, while ® is reserved for trademarks officially registered with the USPTO.
  4. Can I register a trademark before using it?
    Yes, you can file an intent-to-use application, reserving rights before actual commercial use begins.
  5. How does registration help internationally?
    A U.S. registration can be used to apply for protection in foreign countries, providing a streamlined process for global brand protection.

If you need help with why you should register a trademark, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.