Why Bother Registering a Trademark?
At the outset, let’s set the record straight. Registration is not required for you to use a trademark. You can easily find plenty of examples of businesses using unregistered trademarks. We call those common law trademarks. So if registration is not required for use, why bother registering trademarks? Let’s explore the top benefits of a federal trademark registration with the USPTO.
Need to register a trademark for your product or service? Contact US patent and trademark attorney Vic Lin at vlin@icaplaw.com to explore how we can protect your brand.
Registration Benefit #1: Advantages Over Competitors
A USPTO trademark registration provides the owner with certain legal advantages over competitors. These advantages come in the form of legal presumptions meaning that the trademark owner enjoys certain benefits without having to submit further proof. The burden would fall on others to challenge those presumptions.
The legal presumptions of a federal trademark registration include:
- Validity: the registered trademark is valid;
- Ownership: the trademark owner owns the trademark
- Nationwide exclusive usage: the trademark owner has the exclusive right to use the registered trademark nationwide on the goods or services covered in the registration.
Registration Benefit #2: Rights Increase Over Time
For trademarks registered on the Principal Register as opposed to the Supplemental Register, additional rights are automatically given to the trademark owner after a period of time. After five years from the registration date, the following grounds for challenging a registration on the Principal Register are no longer available:
- the challenger’s alleged earlier use – aka trademark priority;
- the mark being merely descriptive of the goods or services covered in the registration.
Furthermore, the trademark owner can file an incontestable statement with the USPTO after five years of registration, thereby making certain trademark rights incontestable.
Registration Benefit #3: Get US Customs to Block Competitors from Importing
Did you know that you can get US Customs to block imports of infringing products? Let that sink in. For a small fee, the US government becomes your ally in blocking imports of goods with similar trademarks.
To qualify for this protection, your trademark registration must meet the following requirements:
- Principal Register (registrations on Supplemental Register are ineligible)
- Benefits apply only to the goods in the registration (any infringing services are not handled by Customs)
- Must record your federal trademark registration with US Customs
Registration Benefit #4: Amazon Brand Registry
For the time being, initial enrollment in Amazon Brand Registry requires a pending trademark application. For practical reasons, it would ultimately be in your best interest to obtain a trademark registration.
Pending trademark applications will ultimately die if they do not proceed to registration. With a dead trademark filing, your Amazon Brand Registry enrollment could become vulnerable.
Registration Benefit #5: Get the USPTO to Block Filings of Similar Trademarks
One of the highest value benefits of a trademark registration is having the USPTO on your side. Essentially, the USPTO becomes your ally by blocking future trademark applications for similar marks by third parties.
You do not have to lift a finger for the USPTO to reject future applications for similar trademarks. In fact, these rejections will occur without you even knowing about them.
When you consider the potential costs of a trademark opposition, you will potentially save tens of thousands of dollars in legal fees by not having to oppose third-party applications for similar trademarks.
Registration Benefit #6: Enforcement Against Trademark Infringement Uses by Competitors
Having a registered trademark gives you greater rights to stop competitors from using similar marks. Sure, you can send a cease-and-desist letter based on unregistered common law rights. Now compare that situation to a scenario where your trademark is registered.
Even better, suppose your registration has passed the 5-year anniversary. A cease-and-desist letter based on a registered trademark will have more teeth. Be aware, however, of the undesired consequences of sending a C&D letter.
Registration Benefit #7: Opposing Trademark Filings by Others
While a registered trademark is not required to file a trademark opposition, your opposition to a trademark application will be stronger when based on a registration. Certain things that you must prove can be met by your trademark registration.
In contrast, a trademark opposition based on common law rights will require the opposer to do much more to meet their burden of proof.
Registration Benefit #8: Boosting Sales
Imagine selling products under your brand with a circle R symbol – ®. Nowadays, original and authorized sellers of authentic products cannot ignore the risk of knockoffs. Selling your product under the ® symbol immediately conveys to purchasers that your goods are the real deal.
Registration Benefit #9: Adding Value to Your Business
Who knows if you might want to sell your business one day? Even if you don’t have plans to sell your company right now, there might come a time when you feel differently.
All other things being equal, a company with multiple trademark registrations will likely warrant a higher valuation than a company without any registered trademarks.
Why Wait to Receive the Benefits of a Trademark Registration?
Why give your competitors advantages that you can secure for yourself? Contact US patent and trademark attorney Vic Lin at vlin@icaplaw.com to explore how you can obtain substantial benefits of a trademark registration.
