SHOULD I REGISTER MY TRADEMARKS?
IVAN HOFFMAN, B.A., J.D.
Trademark rights are acquired through use of a mark. Like copyrights, there is no legal requirement that marks be registered. However, like copyrights, there are a number of distinct advantages to registering trademarks that can alter the end result of any legal dispute regarding a claimed infringement of a mark or the use of a mark that is confusingly similar to your mark. Thus, the answer to the rhetorical question posed by the title of this article is an emphatic “YES, you should register your marks.” For a related article about copyrights read “Do I Need to Register My Copyrights?”
This article focuses on registration on the Principal Register. There may be different issues and different rights raised by registration on the Supplemental Register, which different issues and different rights are not discussed in this article.
Advantages to Registration of Trademarks
Initially, as part of the preliminary steps to registration, it is always recommended that a potential applicant have a thorough, nationwide trademark search done. This refers to United States trademarks. Each country is different. This can be as to a word mark only or as to a word and design mark or any other kind of mark. Thus, the first distinct advantage to registration is the ability to find out if there are marks being used in such a manner so that your proposed mark would end up being deemed an infringement of another party’s mark. Failing to do such a search and analysis can result not only in a litigation for such infringement (with the consequent costs for attorneys fees and damages as well) but also the loss of significant marketing monies as well as whatever good will you might have built up before you realized you were infringing on the other party’s mark. If you spend lots of money marketing a mark and you lose the infringement action and/or are forced to relinquish your mark, you have lost considerable money and potential good will as a result (in addition to damages, attorneys fees etc.). So the party that seeks to “save” money by not performing a thorough search may find such “savings” to be quite illusory and expensive indeed.
Next advantage: once you obtain a registered mark, such registration becomes constructive notice of your claims of ownership. This may seem like a fine legal point but such constructive notice has been held to be evidence of “bad faith” in domain name arbitrations under the UDRP. There are other legal implications of such constructive notice including that it provides evidence of your said rights in a mark in such UDRP actions. By conclusive, the law means that it is not up to you to prove the existence of your rights in your mark. Given the large numbers of such domain disputes currently and well into the future as more and more top level domains come along, owners of registered trademarks hold a distinct advantage over parties who may seek to register domains using those said registered marks. The rights that attend such constructive notice and evidence apply in the offline, non-domain name arena as well of course.
Additionally, having a registered trademark provides the owner prima facie evidence of ownership that the owner has the exclusive right to use the mark throughout the United States on or in connection with the goods and/or services listed in the registration. This is very important since it can give the owner the right to exclude an infringing use nationwide.
Moreover, having federally registered mark then entitles the owner to use that registration as a basis for filing in other countries, much the same way that having a foreign registration entitles that owner to a priority date here in this country.
Having a registered mark entitles the owner to obtain legal remedies not available without registration including the ability to prevent importation of infringing goods. If you have a product that is being pirated and that uses your mark, this can be an effective remedy.
When the mark is in continuous use for 5 years and the appropriate declaration is filed, the rights in the mark become incontestable. There are a number of qualifications on this legal issue but they are beyond the scope of this article.
And of course you can file for trademark protection even before you actually use a mark in commerce if you have a “bona fide intention” to use the mark within a defined period of time. You do not actually obtain a registration of the mark until you actually use it in commerce.
Obtaining registration on trademarks, including doing the appropriate trademark searches, can be expensive. But if you value your intellectual property rights, as you should since these rights are today’s basis for wealth, then the dollars spent laying the proper legal foundation can become among the best expenditures you can make as an entrepreneur.
And preventive law is almost always less expensive than remedial law. Help me is almost always cheaper than fix me.
© 2002 Ivan Hoffman