Trademark Use vs. Registration: What is the difference?

Do you need a registration in order to use a trademark?

No, there is no legal requirement to register or even apply for a mark before you can use it. In fact, it would be impossible in most cases to register a mark in the US before use. Unless a trademark application is based on a foreign registration, the applicant would be required to show usage of the applied-for mark on the relevant goods or services before the USPTO will issue a trademark registration. The US differs from certain foreign countries that enable registration of a mark without use.

It should come as no surprise that businesses all over the US operate without a trademark registration. Think about your own company. Did you apply for a trademark before you began doing business?

Why register a trademark if you can use it without a registration?

Not every mark should be applied for. In fact, it may be preferable to keep doing business without filing a trademark application. For example, if you have a very generic or descriptive mark, your chances of a successful registration would be substantially lower than that of a more distinctive mark. Another scenario that might warrant no filings is when your mark may be somewhat similar to another mark owned by a more vigilant company who may be monitoring new trademark applications. Staying under the radar does have its benefits in certain circumstances.

Assuming that your mark is not descriptive and not similar to any other trademarks known to you in your industry, then it may be worthwhile to consider registration. Of course, applying to register a mark is by no means a guarantee that the USPTO will grant the desired outcome. You may still have to overcome refusals to obtain a registration.

Hopefully, your trademark application process will lead to a registration that can provide you with significant benefits. A trademark registration provides the owner with certain legal presumptions that make it more difficult for a third party to challenge. For example, your mark will be presumed valid and ownership of the mark will be presumed as yours. In order for a challenger to argue otherwise, they would bear the burden showing invalidity or different ownership.

Basically, a trademark registration gives the owner an exclusive right to use the registered mark on the goods or services identified in the registration. If enough time passes, those rights become more difficult to challenge.

What are offensive and defensive benefits of a trademark registration?

Trademark registrations provide both offensive and defensive benefits. A registration would provide the owner with stronger grounds for alleging trademark infringement or opposing a trademark application. Suppose, however, that you have no intention of going on the offense. What kind of defense can a trademark registration provide?

One significant defensive benefit of a registration is having the USPTO as an ally in blocking the registration of subsequent applications for similar marks. This all happens without your knowledge or effort. The USPTO may block countless future applications and you would have invested no time or effort in this endeavor.

What if you want to continue using a mark after an abandoned trademark application?

In one sense, your legal rights after an abandoned trademark application may not be much different than your status prior to filing. From a legal perspective, the post-filing status of a failed trademark application may differ much from the pre-filing status. That being said, there may be some practical differences.

If the trademark examining attorney issues an Office Action, there will be a written record accessible to the public. Any reasons for refusing registration of your mark will be publicly available for anyone to see (if they know how). As discussed above, your filing may also catch the attention of a more aggressive trademark owner who can possibly send you a cease-and-desist letter.

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Frenda Williams
Frenda Williams
2023-02-21
I have had the pleasure of working with Vic and his team at Innovation Capital Law Group on Trademark creation and contracts. As a solo and non-tech founder, the assistance, guidance and recommendations from Vic and his team have been INVALUABLE. And, with the knowledge that I have a Solid, well versed and caring legal team I can turn to, I have the confidence I need to navigate the intricacies of the tech industry as a solo founder. With that being said, If you’re a startup and you’re looking for a legal team that speaks your language, knows the industry and makes you feel like family…. Innovation Capital Law Group is a Perfect fit for you, your company and your team. Five out of Five Stars… don’t let their brilliance blind you 😁
Shiwei Liu
Shiwei Liu
2023-02-20
Excellent service and quick response. Lots of informative documents on its website.
Chang Chien Michael
Chang Chien Michael
2023-02-20
I have worked with iCap for more than 7 years. I am very glad with his professional knowledge that 7 utility patents were granted by USPTO. Vic and his team are very efficient and knowledgeable. Every time he can transcribe my design idea perfectly in two weeks and file it with no rejection from USPTO. The other service including the granted patent following up is always in time to remind me to take actions. That is why I still stick on iCap as my first priority when I want to file a US patent.
Mats Johansson
Mats Johansson
2023-02-20
We have been happy client for 10+ years. Awesome Patent Law Firm!
Hanson Chang
Hanson Chang
2023-02-16
Glad to write a review for Innovation Capital Law Group. We previously worked with a big law firm (2200 employees) on our patents, and decided to shift over to Innovation Capital. It was a great decision, this team got our patents done faster, more effectively, at a lower cost, and with broader claims. Win all around
Genevieve Springer
Genevieve Springer
2022-09-09
Clear, discernible tools and strategies couched within a business conceived from a genuine interest in doing right by founders.
InPlay Inc
InPlay Inc
2022-06-30
Vic and his team have been providing us with the best patent application experiences we could ever have in our entire career life! Their professionalism and technical knowledge have really saved us a lot of communication effort and time on the applications. Definitely highly recommend if anyone is looking for help with IP protection for their business.
Meg Crowley
Meg Crowley
2022-03-05
After working with Vic and his team at Innovation Capital Law Group, our organization is confident our trademarks were solid and protected. Thank you team.
Andy Dong
Andy Dong
2022-02-28
I have been using Innovation Capital Law Group for a few years and continue to use them. They have provided an excellent services on our legal issues including intellectual properties and patents . They are very responsive, easy to work with and very competent . I highly recommend them.

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