An Entrepreneurs Guide to Trademarks
Explanation of trademarks, how they protect your business, and the process for obtaining them and keeping them.full course
- An Entrepreneur’s Guide to Trademarks Part One: What is a Trademark?
- An Entrepreneur’s Guide to Trademarks Part Two: Types of Trademarks
- An Entrepreneur’s Guide to Trademarks Part Three: 10 Ways Registering a Trademark Protects You
- An Entrepreneur’s Guide to Trademarks Part Four: Do I Need A Trademark Lawyer?
- An Entrepreneur’s Guide to Trademarks Part Five: The Application Process
- An Entrepreneur’s Guide to Trademarks Part Six: Maintaining Your Trademarks
Although you can have a protected trademark without registering it with the USPTO, there are a number of benefits to registering. Here are my top ten reasons why you should register your trademark. This list is not all-inclusive but it does cover the major perks to filing with the USPTO.
- Registration gives a party the right to use the mark nationwide. This is usually cited to as the most important benefit that a trademark holder can receive. Without registration, you must be the first to use your mark in a specific territory to have protection there. This means, if you want nationwide protection without registration, you would have to use your trademark in every state and likely, in every county across the United States.
For most businesses, it takes years to become a nationwide operation. Without registration, you run the risk of others using your trademark in a territory before you lay claim to it. And if this was to happen, trying to seek registration after this has occurred will still not buy you entrance into that territory. The person using the mark there has already laid claim. In this situation, filing for trademark registration would likely still be a good idea to prevent usage in other territories. However, it is best to seek registration as soon as you know this is a viable business that you plan to grow for years to come.
- Registration constitutes nationwide constructive notice to others. This is exactly what it sounds like. By registering, you are letting the world know that this is your company! Your goods! Your services! Constructive notice also serves a deeper purpose – if you were to find yourself in a situation where someone has infringed on your trademark rights, either by copying the mark or making counterfeit goods, courts look at registration to determine the damages. U.S. Courts have held that a trademark registration constitutes “constructive notice” to the general public about the ownership of that particular mark. Thus, if someone who is not the registered owner decides to use the mark anyways, they have done so deliberately and likely with ill intentions. Court’s use this constructive notice rule to increase the potential damages that a trademark holder can recover in any potential lawsuit.
- Registration enables a party to bring an infringement suit in federal court. Federal Court has jurisdiction over all registered trademark disputes. If a mark is not registered, the case must be brought before the individual’s state court. This can be a disadvantage for many reasons. First, not all state courts have their own trademark laws and if they do, they are usually much more relaxed than the federal court laws. Next, procedurally, Federal court is much more streamlined, quicker, and all around more efficient. Because intellectual property and trademarks in particular are generally a federal court issue, the federal court system is set up to accommodate these types of claims more efficiently. Finally, there is usually more damages available in federal court over state court in an intellectual property matter.
- Registration allows a party to potentially recover treble damages, attorneys fees, and other remedies. Like benefit #3, going to court can allow you to recover an array of damages for any infringement. This includes triple the amount of your actual damages, attorneys fees, and potential other statutory damages. Damages such as these are usually not an option for an unregistered trademark.
- Registered trademarks can, after five years, become “incontestable,” at which point the exclusive right to use the mark is conclusively established. If your mark becomes incontestable, other parties are prevented from arguing that your trademark is confusingly similar, lacks secondary meaning or that it is functional. These arguments are the most common arguments brought in trademark infringement actions. Thus, by being registered for five years or more, your exposure to many of the common intellectual property litigation pitfalls is essentially erased.
- You can enlist aid from the United States Customs Service when needed. For any of us who have ever shopped on Canal Street in New York City or any major transportation hub internationally know that counterfeiting is a major black market industry. Having a registered mark allows to you receive assistance from U.S. Customers to ensure that no one imports counterfeit or gray market versions of your goods. However, to get this benefit – you must take the additional step of recording your registration with the U.S. Customs service. If your product is one that is easily duplicated however, this is a serious benefit that cannot be overlooked.
- You get to use the fancy ® symbol! What, it’s pretty cool, right? This nifty symbol also constitutes the “constructive notice” that we discussed above. You are telling the world “This is mine! I made this!”
- You can use your registration to prevent cybersquatters from using your mark as a domain name. This is an area of the law that is currently evolving. However, in recent years many trademark registration holders have successfully prevented “cybersquatters” from purchasing their trademark name as a domain name and sitting on it while trying to essentially ransom it back to the trademark holder for a handsome sum. If this is a particular concern of yours, Bellatrix PC can aid you in developing a plan to prevent the loss of any domain names related to your trademark.
- If you plan to register in other countries, you can use your U.S. registration date to get priority. If you plan to expand internationally, this is an important thing to understand from the beginning of your business development and plan for. Our attorneys at Bellatrix PC can help you plan out your international expansion and intellectual property protection overseas.
- Finally, you can deter others from using your trademark. The value received form this alone covers the costs of a trademark registration. You are telling the world that it is your product and you stand behind it. Goodwill for your company begins to develop the moment those goods hit the market. Further, from the moment you register, the USPTO will refuse registration to any marks that are considered “confusingly similar” to yours. Further, others looking to develop trademarks will find your mark on searches and databases, thus preventing them from picking anything similar to yours. Most businesses do not deliberately want to get into litigation so if they find your mark out in the world, they will generally avoid any potential infringement at all costs.
Remember, this list is not all inclusive. However, it cannot be stressed enough that trademark registration is not only a smart investment, but it pays for itself almost immediately in the benefits received.
The next post in this series discusses whether you need to use an attorney to apply for a trademark, or whether a document preparation service such as Legal Zoom or Trademarkia are good, economical alternatives.
Have we convinced you to register your trademarks yet? If so, head on over to Bellatrix PC’s Trademark Packages page and get started today.
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