I’ve talked about the importance of trademark registration before. I’ve talked about when you should register, and why you should (or maybe shouldn’t) from a purely business perspective, but I don’t think I have ever laid out the exact reasons why registering your trademarks with the USPTO is a great idea if you’re a business owner with a brand worth protecting. And, I know that’s you.
After discussing this with colleagues, and doing some research I have come up with a list of the top reasons to register your trademarks…
1. A federal registration gives you the presumption of validity in your trademark. This is a fancy way of saying if you have to file a trademark infringement suit, the defendant has to prove that they had the rights to the mark, rather than you having to prove you do first. They will have to show first use, distinctiveness, or other ownership.
2. Registration will give you nationwide rights and recognition in the mark. This is huge especially if your business as an online presence at all. If you rely on common law rights in your mark, that is geographically limited to the area your business is actually located, even if you’re online.
3. You will have the right to have your mark appear on the Federal Register, which makes it more likely that someone else will discover your prior rights and refrain from adopting a too-similar mark, and attempting to register that mark. This takes out half of the work you must do to monitor your marks!
4. You get the right to use the R in the circle! This puts everyone on notice that you have taken all the necessary steps to protect your mark, and that you can pursue that protection to the fullest extent of the law. This generally discourages others from adopting a mark too similar to yours.
5. Your registration gives you the right to have the Trademark Office cite your registration against later applicants in a 2d office action for a likelihood of confusion. This is a tough one to overcome, and often the USPTO gives very broad protection by citing marks that almost don’t seem similar at all. This is good for you, and one extra step of protection you don’t have to be in charge of. It’s almost like you’re passing off some of your enforcement duties to the USPTO, and that is never a bad thing!
6. Registration will allow you to license or franchise your mark and brand, and it makes your business more desirable to potential business partners, investors, or purchasers of your business. Your intellectual property is one of your biggest assets, but it’s worth nothing if it isn’t registered and protected.
7. Your trademarks can be used as collateral if you need to get a business loan, but lenders will definitely require that they are registered in order to do this. It makes sense, why would an investor lend money on something that can’t be thoroughly protected?
8. If your mark is registered you can record the mark with US customs and protect against the importation of counterfeit goods. This is another one of those important aspects of monitoring your mark that has to get done, so why not get help?
9. If you have to ask a website operator to take down something that is infringing on your mark and your brand, they will likely request the registration before agreeing to do so. For example, trademark protection programs such as Amazon’s Brand Registry will absolutely require a federal registration before allowing you to enroll your mark in the protection program. If you see an infringement happening online you have to take action, and it makes it so much easier to take action if you have the registration in place.
10. And finally! Registration gives you the right to increased damages in an infringement suit. And you are more likely to get injunctive relief against an infringer while the suit is happening if you have your registration secured. What is injuntive releif? It just means you can ask a court to force the infringing party to stop their use of the mark while the case is being litigated.
So there you have it. 10 extremely good (although not an exhaustive list) reasons to get your trademarks registered! When you choose to register your trademark will likely be a business decision that you and your attorney can and should make together, but at the end of the day, you need to get it done. Have questions or interested in finding out more about the registration process? Send me an email to Shannon@montgomerypllc.com and we can chat about it.
Please note that this is not meant to be legal advice for you or your situation, this is merely some legal research and knowledge on the given topic.