The Value of Registering Trademarks
You may have heard that federal registration of trademarks is not necessary in the United States because certain rights to use a mark and exclude others from using it in connection with similar products arise automatically. While this is generally true under common law, there are several limitations that come with reliance on a common law approach to securing trademark rights. There are also manifest benefits to registering the mark at the federal level that often make the undertaking worthwhile. Read on to learn the value of registering trademarks.
It helps to consider what may constitute a trademark in the broadest sense. A trademark is any word, symbol, or phrase used to identify a seller or manufacturer’s products and to distinguish them from products of another origin. Even though the common law extends a trademark right to the first user of a mark, the right is limited to the geographic area of use or the geographic reputation of the mark. This opens the door for competing use of the same mark and sets the stage for future conflict when either business expands.
To prevent the possibility of a competing mark, the mark should be federally registered as soon as possible. A trademark registration provides nationwide notice as to the owner of the mark from the date of registration. This will discourage attempts to claim a good faith subsequent adoption and use of the mark. The United States Patent and Trademark Office also cites prior registrations against applications for confusingly similar marks and will refuse to register such marks. This adds another valuable layer of prevention to help protect the value of your trademark asset.
Recalling that first use wins in the trademark system of the United States, a federal registration is practically invaluable because it treats the mark as though it was in nationwide use as of the filing date of the application. This can serve as valuable evidence should another entity challenge ownership rights over a registered mark. The related goods and services listed in the registration will have a presumption of validity and exclusive use of the mark. After five years of continuous registration, the mark receives heightened protection, including the possibility of obtaining “incontestable” status, an even more powerful tool to dissuade others from using the mark without the need to bring litigation.
For a consultation regarding your individual business issues, please contact San Diego Corporate Law today!