Trademarks:  To Register or Not to Register

For business owners, large or small, their brand is often one of the most valuable parts of their business. 

The company’s trademarks are what identifies and distinguishes that brand in the eyes of the company’s customers.  But, did you know that it is not always “necessary” formally register your trademark?  So, that begs the question of whether you “should” register your trademark(s) or not.

They are a plethora of factors to consider when deciding whether to register a trademark or not.  This blog post does not (and cannot) consider all of them.  The intent is to present a few of the key factors to consider, from the eyes of a litigator seeking to bring or defend against possible lawsuits.  There are other business considerations, which are not treated here.

Receiving Protection, Through Use

In order for your trademark to receive protection under the law, you simply have to have the first and continuous use of the mark in commerce, in connection with goods or services.  In other words, if you want to protect a trademark – just start using it.  Of course, you will want to check and make sure no one else is already using a substantially similar mark.  But, if no one else is then you should get it out there on your product, in your marketing material, etc.  The longer it is used, and the more prevalent its use, the more likely you are able to protect against the use of others.

With that in mind, it would seem that registration is superfluous.  However, officially registering your trademark enhances the protection you receive. 

Nationwide Constructive Use

By registering your trademark, it provides nationwide constructive use.  In other words, if someone on the other side of the country were to try and use the same mark, you could potentially sue them for infringement.  That fact that it is registered means that they could have (and should have) know that you were already using that mark.  It is as if you were using that trademark in their area, without actually being there.

Enhanced Damages

From a litigation standpoint, perhaps one of the largest benefits from registering your trademark is that you can get enhanced damages.  If a trademark is registered before the infringement occurred, then the plaintiff can seek to recover the defendant’s profits, damages sustained by the plaintiff, and also the costs of bringing the action (which potentially includes reasonable attorney’s fees).[1] 

Once it is registered, you can put the ® symbol everywhere your trademark is used.  If you are properly using the ® notation, it allows you to more easily seek the defendant’s profits from using your mark, without proving that they knew it was registered.[2] 

Presumed Validity

When a trademark is registered, it is thereafter presumed by the courts that your trademark is valid.[3]  This decreases the plaintiff’s burden in a lawsuit against a potential infringer.  The statutes even go further than that and specify that after a trademark has been registered for five (5) continuous years, and is still in use in commerce, then the trademark is “incontestable.”[4]  This severely limits the ability of someone else to challenge your trademark, and makes it even easier to bring a lawsuit against someone else for infringement.  It is also a strong defense against someone else who may try to claim that you are infringing on their mark.

Conclusion

While it is a business decision for whether to officially register your trademark, there are plenty of good reasons from a litigation standpoint to register your mark.  With an eye on potential litigation, the benefits favor registering it, as there is enhanced protection and remedies.  It also can make the litigation easier and therefore lessen your litigation costs. 

If you own a business of any size, it is highly recommended that you speak with an experienced attorney such as the attorneys at the Goosmann Law Firm, PLC, in our Omaha, Sioux City, or Sioux Falls offices to evaluate whether it is in the best interest of your business to register your trademarks.

[1] 15 U.S.C. § 1117(a)

[2] 15 U.S.C. § 1111

[3] 15 U.S.C. § 1057(b)

[4] 15 U.S.C. 1065