The Eight Essential Reasons to File a Trademark
As a trademark attorney in Denver, Colorado, I get asked all of the time why exactly someone should file a federal trademark. It’s true that regardless of whether you file for a federal trademark, you still may have common law rights in your brand, enforceable in state court, simply by using the brand in commerce. It is also true that even when you file a federal trademark, there’s a chance a competing entity will–whether valid or not–challenge that mark in an effort to prevent you from impacting its brand, or to simply preclude any similar names from entering the market. Unfortunately, trademark trolls do exist, and they are one of the central reasons it’s critical to research your mark prior to filing a federal mark application.
In the far majority of cases, however, trademarks are an important part of an overarching, corporate brand strategy, regardless of the size of the business. Here are the eight essential reasons to file a trademark, all of which are unique to federal registration with the United States Patent and Trademark Office (USPTO):
1. Federal Registration Is an Effective, Practical Deterrent to Competition or Infringement.
Most people and companies want to individualize their products or services. To that end, people will generally research what similar brand names exist in the market prior to using a chosen name in association with their business. The federal registration system is a national notice system that provides a great manner of ensuring other, potential competing brands are aware of your place in the market prior to their use of a similar mark or name.
2. Federal Registration Creates a Legal Presumption of Validity, Ownership, and First Use.
Once the USPTO permits registration, a registered mark obtains a legal presumption of the mark’s legitimacy, ownership, and priority in first use. These facts can be especially useful in any infringement dispute, whether before or after a suit is filed.
3. Federal Registration Provides Mechanisms of Enforcement Short of Filing a Lawsuit.
Lawsuits are expensive. A trademark infringement action can easily reach into six figures in fees and costs, especially where experts are involved. Federal registration, however, provides initial leverage that can assist in resolving a dispute prior to needing to file a lawsuit, including by demonstrating ownership and first use, as detailed above.
4. Federal Registration Provides Additional Court Remedies.
Should a lawsuit become necessary, the Lanham Act, the statute governing federal trademark issues, permits the seeking of monetary remedies, including costs, damages, lost profits, and in some cases, punitive damages or attorney fees, that are not available under common law protections.
5. Federal Trademark Registration Provides National Protection.
Federal registration provides protection in all 50 states (as opposed to common law rights, which may exist only in a particular state or states.
6. Federal Registration Has Ancillary Domain Name Benefits.
Obtaining a federal trademark also provides the ancillary benefit of giving you priority in a domain name similar to that mark. The international enforcement mechanism against cyber-squatting looks at whether a party maintains a federal intellectual property right in a mark associated with a disputed domain name as evidence of good faith and priority of use. More information on this issue can be found at the World Intellectual property Organization’s website.
7. Federal Registration May Make It Easier to File in Foreign Jurisdictions.
Obtaining a federal trademark registration often makes it easier to file into the Madrid System, the international intellectual property trademark system responsible for registrations in 117 countries.
8. Filing a Federal Trademark Application is Inexpensive.
Finally, depending on the number of classes for a particular trademark, the filing of a mark, including federal filing costs and attorney fees is typically between $1,000 to $2,000. This is a relatively inexpensive investment in light of the typical business expenditure related to branding, the time spent developing the brand, the costs of resolving a trademark dispute, and the potential costs of rebranding several years into business subject to a trademark infringement dispute.
Ultimately, the decisions of whether and when to file for a trademark are important and particular to each individual business. In addition to the multiple benefits discussed above, there are a number of risks with filing a trademark. You should accordingly discuss these issues with a qualified attorney in consideration of any filing.
Zach Warkentin is a trademark attorney in Denver, Colorado. He is also a musician and a former graphic designer and creative director. For more information about Zach, please visit Warkentin LLC here.
DISCLAIMER: The above discussion is for informational purposes only and is not for the purpose of providing legal advice. You should contact an attorney to obtain advice with respect to any particular issue or problem. Use of and access to this website do not create an attorney-client relationship between Warkentin LLC and the reader.