Why do anything? That is a profound question there. I’ve spoken to many business owners who did not bother with trademark registration. It should be as fundamental as registering your LLC or having a web presence. If you are using a tradename or selling a product, you should register your mark.
Part of the reason is business planning. Registering your trademark helps you find out if there are any other users with a similar trademark. Using the USPTO database is a great way to determine if your trademark is already in use.
Let’s go into some detail here.
The first benefit of Trademark Registration: Nationwide protection:
A registered trademark receives the benefits of nationwide protection, even if it is not used nationwide. That means once you see someone with a similar name anywhere in the United States, you can clobber them with a cease-and-desist letter, lawsuit, or nasty phone call to make them stop using it.
In a more practical sense, it allows you to expand your business across the United States without the fear that someone else will pick it up and start using it. Once you have your trademark, you are free to use it, within limits, of course.
The benefit is designed to protect everyone, even the little guy. An excellent trademark story comes to mind here.
In 1961, a growing burger chain, Burger King, began to open restaurants in Illinois. Unknown to them, a small burger joint with the same name operated in Mattoon, Illinois, since 1957. A legal battle ensured where the tiny Burger King tried to stop the franchise Burger King from operating in Illinois. The case ended with the franchise able to use the name throughout the state, except within 20 miles of the tiny Burger King restaurant. This is because the giant failed to register its mark when it began operations and discover the Mattoon Illinois in a timely manner. There are more details for the case, but it shows the importance of Trademark registration.
The second benefit of Trademark Registration: Warning function.
Do you know the ® symbol? Which is awfully hard to type into a document without making it look funny. What is it doing way up there? Anyway, we see that every day. Guess what? You cannot use it without an official USPTO registration. Well, you could, but it is a bad idea. If you casually use that “R” mark without proper registration, you will lose the right to use it in the future.
The R-Ball tells everyone you are registered and to back off using a similar name. It says someone properly registered the trademark with the USPTO, and to use any similar mark is asking for trouble. If you do not have your mark registered, you can use “TM” or “SM.”
The third benefit of Trademark Registration: Evidence of Validity
Registering a trademark also gives you evidence of the validity of your trademark. It proves you own the mark and your exclusive right to use the mark in commerce. Your trademark will be listed in the USPTO online database so that others will see that the logo or name is in use.
If you write a cease-and-desist letter, you can include the USPTO registration data within the mark to show the recipient you mean business. You may also use it as evidence in federal court to prove your ownership of the trademark.
Essentially, it serves as a public notice of your claim of ownership of a valid trademark.
The fourth benefit of Trademark Registration: Federal Court and Increased Trademark Damages
Finally, trademark owners can bring actions against infringing marks and unscrupulous users in federal court. As I said before, registration is not required to obtain a trademark, but it is necessary to bring a court action. In these cases, a state trademark registration will not help you.
Additionally, it allows for increased damages should someone use your trademark. If an infringer uses a trademark to sell counterfeit goods, a prevailing party may get treble damages and attorney fees. That means triple the actual damages as a penalty to the infringers.
Even for non-willful infringement, damages can range from $1,000 to $200,000 for each counterfeit mark and each good sold.
In the long run, the cost of trademark registration is not high, even if you hire an attorney. Should you want professional assistance, please contact us, and we will be happy to help.