Along with “how does the trademark registration process work?” one of the most common questions that I hear over and over is, “why should I register a trademark?” Your rights to your trademark or service mark begin upon your first use of the mark “in commerce” (legalese for, essentially, public offering of your goods or services), regardless of whether you register. And, the current fee charged by the Trademark Office per class of goods or services in an application ranges from $225-$275 per class, which can add up if you are in the business of offering several types of goods and/or services. So why register? Because trademark registration comes with some hefty benefits.
The ® Is For Registered.
If you register a trademark with the United States Patent and Trademark Office (or “USPTO”), you will enjoy a variety of perks. Federal registration allows you to use the ® symbol, which is reserved for federally registered marks, and lets the world know that you consider this mark to be your brand, thus (ideally) warding off infringers.
The Public Record.
Registration also creates a public record of your ownership of the mark and date of registration and date of first use. This can be important if you find yourself arguing with an infringer that attempts to claim its use of a similar brand predates yours, and this public record prevents infringers from claiming their adoption of a similar mark was done in “good faith.” (In other words, “We didn’t know you existed” doesn’t really work as a defense.)
The Potential Remedies.
Other benefits to registering your mark with the USPTO are the remedies available to a brand owner if infringement happens. What’s a remedy, you ask? Remedies are the things that you ask for because of the harm that has been or is being done to you if you had to file a lawsuit. Remedies in general range from things such as money damages in the form of lost profits, to non-monetary remedies such as a temporary injunction.
Owning a federally registered mark entitles the owner to the following:
- Potential to recover attorneys’ fees incurred;
- Certain statutory damages in cases of counterfeiting, including the potential to block imports that infringe upon your mark;
- Potential to recover triple or “treble” damages; and
- The ability to file a lawsuit in federal court (as opposed to state court).
These benefits are important weapons to have in your arsenal when policing your brand against unauthorized users (which you’re doing, right?). Also, knowing that you’re entitled to the remedies listed above could make an infringer more cooperative. How so? Well, they don’t have to respond to your letter. The thought of being on the hook for attorney’s fees and, potentially, a tripling of your monetary damages, though? Those are powerful motivators to respond and work something out.
When you register a trademark with the Trademark Office, you get to enjoy protection in all of the United States. Without registration, you have basic rights. But an opponent could argue that your rights are limited to the states in which you actually operate. (This can leave some gaps in protection!)
The Point: A little investment now can go a long way. Familiarize yourself with these benefits and think about whether your brand could benefit from federal trademark protection.
What’s next? Click here to download your [free] Essential Legal Checklist from Spear IP.
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