Nearly all businesses have trademarks, even if they have never tried to register them. Merely doing business under a name, or selling a product through the use of a name or logo, may give a business owner “common law rights” in the name or logo.
These rights may entitle the business owner to remedies under the law against infringement, even if the business owner takes no steps to register its marks. While a federal trademark registration does not create rights in a mark, it can help to secure those rights and provide additional benefits to the trademark owner. Smart business owners should consider carefully what their marks are and whether it makes sense to attempt to register them.
Registering a trademark with the United States Patent and Trademark Office confers several benefits. One benefit of applying for registration is that it gives the applicant priority of use in the mark that is effective on the day the application is filed. This means that even if a company has priority in its use of a mark, called a “senior user”, if a later user of a confusingly similar mark, a “junior user”, is the first to file a trademark application, and the first company seeks to register its mark the junior user’s application will be given priority and will likely prevent the senior user from obtaining a registration. The senior user will not be prevented from continuing to use its mark, but, if it may be limited to using that mark only in the market it had established at the time the junior user’s registration issued. This situation illustrates one of the primary benefits of a federal trademark registration – it gives a business peace of mind that it will be able to continue to use its mark without interference from later junior users. In fact, the registration gives the business a potential nationwide right to use its mark in areas where it is not currently doing business. For example, if a business in California obtains a federal trademark registration for its mark and a business in Arizona begins using a confusingly similar mark after the registration issues, if the California business expands into Arizona, it can require the Arizona business to stop using its mark. Another benefit of registering a trademark is that it gives the world notice of the applicant’s claim of use and ownership of the mark. Many businesses that are looking for marks to use will search the U.S. Patent and Trademark Office database of registered and pending marks.
If a business registers its mark, other businesses are more likely to find that business’s mark and are more likely to avoid using it or similar marks. A third benefit of federal registration is the right to use the registration symbol, ®, in connection with its mark. Use of the symbol can have marketing advantages, as consumers may see a registered mark as an indication of quality. If it is ever necessary for a business to enforce or defend its trademark rights in court, a federal registration gives the business a number of advantages. First, the registration creates a presumption that the mark is valid, that the registration owner is the true owner of the mark, and that the owner has the exclusive right to use the mark. Second, the registration allows the owner to file a suit in federal court. It is often preferable to bring an action in federal rather than state court. Yet another advantage of federal registration is that it entitles the trademark owner to a greater range of options for seeking remedies in court if its mark is infringed. The owner of a registered mark can seek damages for trademark infringement beyond what can be obtained with only common law (i.e., unregistered) rights in a mark.
Finally, a federal trademark registration also can help to prevent foreign infringers from importing their products into the United States. A business can notify the U.S. Customs and Border Protection agency (“CBP”) of its registered mark, and if products are imported into the United States that infringe the registered mark, CBP can seize those products. Given the above advantages, businesses should seriously consider seeking a federal registration for their marks. However, the registration process can be complex and businesses should consult with an experienced trademark attorney to determine if their trademark qualifies for federal registration and to guide them through the registration process.
About the Author: This article was written by Stephen L. Davis and Mark. R. Leonard of Davis & Leonard LLP. Davis & Leonard LLP is a law firm in Sacramento dedicated to providing legal services to individuals and businesses in the fields of trademark, copyright,Internet commerce, privacy, business formation, management, and transactions, and business and civil litigation. More information can be found by visiting our website, www.davisandleonard.com, or by contacting us at sdavis@davisandleonard.com.
