Over the years, many business owners have asked attorneys the question “Should I register my trademark?" Of course, the standard attorney answer is “maybe”. In most cases, the answer is usually “yes”, but there are some circumstances when the answer is “no”.
The reason the answer is usually “yes” is that registration of your trademark with the United States Patent and Trademark Office (“USPTO”) provides your business with a significant number of benefits. The following is a short summary of some of the benefits of obtaining a U. S. trademark registration.
- Ownership - You are the presumptive owner of the US registered trademark throughout the United States, even if you only do business in one town in one state. Another business interested in the trademark has to prove that you are not the owner.
- Property Rights - With ownership come property rights that can be bought, sold, licensed, and used as security, just like other property.
- Exclusivity - You have the right to exclude others that attempt to use the same or similar marks for the same or similar services across the entire United States. In the case of famous marks, the exclusivity may extend to goods and services that you do not offer.
- Preemption - Your trademark can present an obstacle or prevent the registration of the same or similar trademark in the USPTO.
- Nationwide Public Notice - Your registration provides nationwide constructive notice to all potential infringers of your rights in the trademark. Furthermore, in the modern era, many businesses will perform an Internet search and a search of the USPTO trademark database before choosing a trademark. When most, and possible nearly all, businesses find that the same or a similar trademark is already registered, those businesses will tend to choose a different trademark.
- Incontestability - If your trademark is suggestive or arbitrary in nature, you can apply for incontestability of your registration after 5 years of continuous use. Incontestability expands your enforcement rights and reduces the types of challenges that can be made against your trademark.
- Enforcement - You can sue the potential infringer for money damages and seek injunctions to prevent further use of the trademarks. In addition, other businesses, such as advertisers, may be more willing to cooperate with you in stopping the use of infringing trademarks if you have a registered trademark.
- Timeliness - The trademark application process can be started after the marketing team selects the trademark, but before the business even begins to use the trademark, or after the trademark is already in use. The USPTO generally responds to the application within 3-4 months and the entire registration process is often completed within one year from the application.
Furthermore, all of the aforementioned benefits may be obtained for a relatively low cost. US trademark application fees are nominal $250 for each class of good and services. Many trademarks are registered in just one class and usually only require a few hours of legal services to search, prepare, file, and prosecute the application.
With all of the aforementioned benefits of registering trademarks in the USPTO, the next question may be “when should I not register my trademark?" While business may have a number of reasons not to register a trademark, here are a few reasons to consider.
- Limited Use - If you are planning on using the trademark for a short period of time, the above benefits may be of a limited value to your business and/or not worth the expense.
- Similar Registered Trademark - While you do not typically want to be in this situation, you may find that your trademark is similar to another trademark being used for similar goods and services or goods and services in the same class. This situation can inadvertently arise due to the large variety of goods and services in each class, so products that really are not very similar may be classified in the same trademark class.
- Descriptive & Generic Marks - Businesses sometimes adopt marks that are highly descriptive and generic names for the goods and services being sold. While those marks may have some value to the business, that value may not be protectable as a trademark. For example, if you own a barber shop on Main Street, you can adopt the mark “Main Street Barber”, but it is highly descriptive of your service and location, as well as every other barber on every Main Street, so it is probably not protectable as a trademark.
With all of the potential benefits of trademark registration and the potential detriments of not considering trademarks, it is highly recommended that all business owners and executives give due consideration to the impact of trademarks on their business.
Michael C. Antone, a Registered US Patent Attorney, serves as Of Counsel at Davis, Agnor, Rapaport & Skalny LLC. For questions about this article or other questions regarding intellectual property, please contact Michael.