Trademarks protect your name, logo or slogan. But trademark law is confusing. There are multiple types of trademarks such as registered and common law ones. What’s the difference?
And, what kind of trademark offers the best protection against someone’s use of your name, logo or slogan? We’ll explain it all to you in this article.
For starters, “Registered” trademarks are those that are registered with the U.S. Patent & Trademark Office (USPTO). Registration requires surviving a complicated application process – read more about the Trademark process here
By contrast, common law trademarks require no registration. They are totally free and can be obtained by merely using a mark in commerce. These are called “common law” marks because their rights derive from the “common law,” which means they come from a history of judicial decisions, rather than specific statutes.
Both types of trademarks give their owner the right to use a mark in commerce, and the right to prevent other people from stealing your businesses’ identity.
Which Kind of Mark Provides the Best Protection?
Common law trademarks are easier to obtain, but afford their owners less protection. In fact, common law trademarks only provide their owner with legal protection over two geographic areas: (1) areas where the mark is actually used; and (2) areas where the owner’s business would naturally expand to. These protections only apply if the business owner uses the mark in those areas before anyone else.
Imagine that you have a small business in Akron, Ohio. Your company logo or slogan may acquire common law trademark rights in and around Akron (i.e., where you do business and sell your products). It would probably not develop common law trademark rights outside of Northeast Ohio, however. Thus, if a different business in Miami, Florida or New York City started using a similar logo or slogan, there probably wouldn’t be much that you could do to stop them.
Federal registration, however, puts the whole nation on notice that you are using a particular mark.
Thus, once your mark is registered on the so-called Federal Register with the USPTO, no one can use that mark.
To obtain Federal registration, however, you must clear the trademark approval process before the USPTO. And, if another person or entity has registered a similar mark to sell or market similar goods or services, you may not be permitted to register your mark.
Yet, a mark that is registered with the USPTO gives you national protection, while common law trademarks, on the other hand, only protect you in and around geographic areas that you already do business.
The Advantages of Federal Registration
Registered trademarks have several other advantages over common law trademarks as well. First, federal registration makes it easier to sue in federal court, which may be faster than state court and give you certain procedural advantages.
Second, after a mark has been registered and used for five years, it becomes “incontestable.” This means that the registrant has conclusive evidence of his or her right to use the mark; it also limits the kinds of defenses that an alleged infringer can raise. Together, someone with a registered trademark generally has an easier time both prosecuting and defending trademark infringement actions.
Third, registering your mark may increase the number of remedies available to you if you have to sue for infringement. Federal registration allows you to go after the defendant’s profits, seek statutory damages, and ask for punitive damages, among other things. These remedies often aren’t available when you sue on violations of your common law rights.
Finally, you can use the famous “®” symbol to designate your product as bearing a federally registered trademark, giving your mark more legitimacy in the eyes of competitors and hopefully dissuading would-be infringers. Common law marks, by contrast, can only use “™.”
Based on the above, it would seem like registering your trademark is a no brainer.
But there are some downsides to federal registration with the USPTO.
Downsides to Federal Registration
First, there are fees for applying and registering your mark with the USPTO. However, the benefits typically outweigh the fees.
Second, applying can be challenging. You must apply properly to obtain the protection that you deserve, and it is hard to do by yourself. Most serious businesses hire a lawyer to help them, and that too, isn’t free.
Small businesses that are limited to a geographic region and whose business does not depend on widespread brand recognition might find that registering is more effort than it’s worth. However, a trademark can be very important if the business starts to grow.
For larger businesses that want a national reach, however, obtaining a registered trademark is almost a necessity. This is also probably true for companies—even startups—whose business model depends on branding, slogans and widespread name recognition. Larger companies should invest the time and expense to protect their intellectual property with a registered trademark.
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