Should You Register?

Like any investment into a business, the cost of registering your trademarks and service marks needs to be weighed against the benefits registration provides. Your rights of ownership of a mark, trademark or service mark, follow from your use of it, not from registration, but registration provides additional legal protection and presumptions that you don’t have without registration. Marks are property, and their registration provides legal title to them in much the same way that deeds provide legal title to real property. So the question of whether to register your trademarks and service marks is a question of whether the specific rights and protection registration gives you are worth the investment.

Generally, the cost of local (state) registration is trivial; national registration properly done, including a comprehensive search, is not pocket change, but may be a minor expense in relation to the value of your business and the possible cost of not registering. The calculation is best made from this perspective:

How much is your business worth without brands?

How much is a can of cola worth that isn’t labeled Coke® or Pepsi®?

Federal Registration:

The U.S. Trademark Act established two registers for marks used in interstate or international commerce. The Principal Register is reserved for marks that qualify for registration under the statute. The Supplemental Register is for certain “descriptive” marks initially barred from registration, but determined to be capable of identifying the source of goods and services and acting as trademarks and services marks upon establishing with consumers their connection to certain goods or services by their use in the marketplace. Although the benefits gained by registration on the Supplemental Register are limited, they are still valuable. Moreover, a mark registered on the Supplemental Register may subsequently be placed on the Principal Register when, among other things, the mark remains in substantially continuous use in commerce for at least five years after registration on the Supplemental Register.

Registration on either the Principal Register or the Supplemental Register gives you the right to:

  • Use the ® symbol of U.S. registration with your registered trademark or service mark;
  • Prevent U.S. registration of the identical mark or any confusingly similar mark in connection with related goods or services;
  • Bring suit for infringement and other misuse in federal court;
  • Register in foreign countries based on U.S. rights;
  • Have an Internet domain identical or confusingly similar to your registered trademark or service mark removed from use or transferred to you on a showing of bad-faith registration or damaging use of the domain.

In addition, registration on the Principal Register serves as constructive public notice of your claim of ownership and further provides:

  • The legal presumption that your registration is valid, that you own the registered trademark or service mark, and that you have the exclusive right to use that registered mark in commerce throughout the United States and its territories;
  • The right to prevent the importation of goods bearing an infringing trademark at the point of entry by means of the U.S. Customs and Border Protection service and the U.S. Postal Service;
  • In seeking registration in many other countries, the ability to rely on your U.S. registration, rather than actual use of your mark in the country, to obtain registration in that country;
  • The ability to sue for actual and punitive damages, and also for legal expenses in cases of malicious, intentional, or knowing infringement after notice has been served;
  • The right to bring suit in federal court regardless of claims made in other (state, county, foreign) jurisdictions;
  • The ability, after five years’ registration, to limit the grounds on which your registration may be attacked, by declaring your registration, and your rights under it, “incontestable”;
  • Access to the Madrid System for the International Registration of Marks.

State Registration

Whether or not you foresee using your trademark or service mark in interstate or foreign trade, it is often a good practice, and an economical one, to register your trademark in your state as soon as you have used it locally. Most U.S. states have a trademark registration process. State trademark laws and rules generally follow the federal statutes and regulations, although their effect holds sway only within the state, and prior U.S. registrations of the identical and similar trademarks take precedence over them. On the other hand, a state registration claiming use of a trademark in a state prior to use of the identical or similar federally registered mark can form the basis of limiting or preventing the use of the federally registered mark in the state or a part of the state.

Also, new Internet domain dispute resolution policies recognize the priority of state trademark and service mark registrations as a basis of supporting your right to a particular domain registration.

You can usually accomplish state registration yourself. The registration fees are generally low, because state trademark registrations are usually given without substantive examination and verification, except for a search of that state’s trademark and business-entity registrations.

International Registration

As with all legal rights and protection, your trademark rights and the protection that your U.S. trademark registration affords extends only to the U.S. border. Most nations have trademark laws similar to U.S. laws. The differences aside, the same basic premises apply throughout the world: In order to have effective trademark rights in a particular country, you have to be using the mark in that country. In order to gain the additional protection of registration in a particular country, you must also register your trademarks and service marks in that country. So that, if you intend to market your products under your marks internationally, it would be wise at least to make sure your marks are not already registered or in use in each country where you may do business, and further to register your marks in each of those countries.

Obviously, search and registration in several countries will be a substantial investment. However, several international treaties help to decrease that burden. For example, under the Madrid Arrangement there is an International Trademark Registration that is recognized to a greater or lesser degree by almost 80 countries. More recently, the establishment of a European trademark office (OHIM) allows for a single European Community Trade Mark registration that is recognized by all members of the European Union. There is also a pan-African registration.

In addition, the United States has reciprocal agreements with most countries in the world — primarily under the Paris Convention or through the World Trade Organization — that afford certain advantages to U.S. trademark owners. For example, in general, if you file an application to register a mark in one of those countries within six months of filing an application to register the same mark in the U.S., the application in the other country will be given priority based on the earlier filing date of your U.S. application. Also, in general, if you own a U.S. registration of a mark, registration of the same mark in those other countries will be granted based on your U.S. registration without your having to show use of the mark in those countries. The U.S. grants the same advantages to foreign trademark owners when registering their marks in the U.S.