Why not register your trademark?
There may be valid reasons for not registering your trademark, but the legal cost should not be one of them. Unlike patent costs which are multiple times higher, the cost to register a trademark for a single class of goods or services is generally affordable, even for an early stage startup. Let’s explore some valid reasons for not filing a trademark application.
Stay under radar of competitive trademark owners
If your selling a particular niche product with a mark that might arouse the suspicion of a third party trademark owner, it may make sense to stay under the radar by not registering your trademark. Trademark owners who actively monitor usage of similar marks often employ tracking services that will automatically alert them of new trademark filings for similar marks. By not filing a trademark application, you might be able enjoy years of usage without ever receiving a cease-and-desist letter.
Lack of use
Perhaps you intend to use a particular mark, but haven’t yet followed through on the product launch and production. Though you can file an Intent-To-Use (ITU) application to reserve your rights prior to using the mark, some startups prefer to wait until they have viable product before taking the steps to register the trademark. While I don’t necessarily agree with this approach, I can certainly understand the reasons behind it.
Company not yet incorporated
This is not so much a reason to forsake registration, but rather a reason to wait for the right timing. A proper trademark application must be filed on behalf of the rightful owner, i.e., the “applicant.” If the founders are in the process of incorporating an entity that will ultimately offer the goods or services under the mark, it would make sense to file the trademark application on behalf of the entity after formation. If an ITU application is filed on behalf of an individual founder, that founder must use the mark on the goods or services before it can be transferred to the company. Otherwise, assigning an ITU application that has not yet been used can be tricky.
What benefits do you forego by not registering your trademark?
If you’re still unsure about filing a trademark application, it may help your decision making by considering the benefits that would be missed. Keep in mind that a trademark registration will not necessarily bring all these rights since certain benefits are tied to particular requirements that may take time or further effort.
Selling goods on Amazon and other ecommerce platforms
Owning a federal trademark registration enables a vendor to register their brand with Amazon brand registry. While this will not easily solve the problem of knockoff products being sold online, it will give you a starting point to enforce your trademark against copycat competitors.
US Customs becomes your ally
A USPTO trademark registration for goods (as opposed to services) on the Principal Register (as opposed to the Supplemental Register) may be recorded with US Customs and Border Protection (CBP). In theory, US Customs essentially becomes your ally in blocking the import of infringing goods. As a practical matter, you may need to invest time in meeting up with Customs officials to show them your mark and guide them on what infringing goods might look like.
Incontestable status after 5 years
Trademark registrations on the Principal Register for more than five years are eligible to become incontestable. An incontestable registration provides the trademark owner with certain legal presumptions which may become quite practical when it comes trademark enforcement against others using similar marks on related goods or services.
Blocking subsequent trademark applications by third parties
A federal trademark registration also turns the USPTO into your ally by blocking the registration of future applications for similar marks filed by others. Trademark examining attorneys at the USPTO may reject third party applications for similar marks without you even knowing about it. You reap this benefit without having to spend any time or money. Of course, the burden is ultimately on you to oppose any trademark applications that get approved in spite of your registration.
Furthermore, there might be countless trademark applications that never get filed as a result of your registration. For example, we typically conduct a knockout search of a mark before filing the application. If we see registrations of any highly similar marks that may present a high risk of rejection of our client’s contemplated mark, we may suggest that the client consider alternative marks.
Blocking third party trademark applications in foreign countries
Let’s be clear – a US trademark registration will not block any foreign trademark applications. However, you can use the early filing date of your US trademark application to your advantage by filing foreign trademark applications within a certain timeframe. Known as trademark priority, this benefit can be quite helpful in situations where others see your product launch in the US and then attempt to register the same mark in foreign countries.
Using circle R symbol: ®
With a federally registered trademark, you may use the circle R symbol ® in the sale of your products. Without a registration, you may still use the TM symbol, but it will not be as powerful a brand and deterrent as ®.
Paving the way for your future applications for similar marks
It is not uncommon for a business to expand product lines and services under the same trademark. In such growth situations, the trademark owner cannot modify an existing registration to add goods or services. A new trademark application must be filed to cover any new products even though the mark is the same as that of a prior registration.
When filing a new trademark application, the applicant may identify their ownership of prior registrations for similar marks. This typically eases the approval process for the new trademark filing although there is no guarantee that the new filing will be approved.
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