Once you have selected a trademark and it has been cleared for use, you can simply start using the mark. This will give you common law trademark rights. However, you should consider filing an application to register the mark with the United States Patent and Trademark Office (USPTO). There are a few questions that might come to mind when this recommendation is made: 1. Why should I register my trademarks? 2. Which of my trademarks should I register? And 3. When should I register my trademarks?
Why should I register my trademark?
Trademark rights in the United States are, after all, based on use of the mark in commerce and not on registration. A registration is not required prior to beginning to use a mark, to obtain rights in a mark, or to sue for trademark infringement. Why then would you spend valuable marketing dollars on obtaining and subsequently maintaining a Federal Trademark Registration? There are a number of good reasons to proceed with a registration.
First, yes – you can obtain common law trademark rights in a mark simply through use. However, your common law rights will be limited to the geographic location where you have had actual use. A trademark registration will automatically expand your rights geographically to include the entire United States, except for any areas where there is a prior user on the day the mark is registered. What does that mean?
By registering your mark, the right of a prior common law user to expand its use can be cut off, stopping them from expanding into new areas. Alternatively, and perhaps more important, registration can prevent you from having your right to expand cut off by a subsequent user who registers the mark. It should be noted that the prior user will keep whatever rights it had as of the date of registration. Also note that the prior user can still be a problem as it may be necessary to tailor national ad campaigns to avoid the prior user’s service area. For this reason, it is not a good idea to adopt a mark that you know is in use by a third party, even if that use is geographically limited. Further, if you begin the registration process soon after clearance of the mark you may be able to avoid having to deal with any prior users at all.
In addition, in the event of litigation, the registration is prima facie evidence of the validity of the registered mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce on or in connection with the identified goods or services. Registration also provides other procedural benefits in the event of trademark litigation. So, the money spent on the registration can very easily be recouped in the early stages of litigation.
One further reason to register your mark, one that may have more applicability to a majority of companies, is that the registration places you in the USPTO database. As a result, when the next new company comes along and runs its trademark search it will see that you are using the mark and therefore is far more likely to choose a different mark. Thus you avoid the cost and hassle of having to try to stop a subsequent user.
Which of my trademarks should I register?
In the best of all worlds, a trademark owner would be best served by registering every mark that they use. However, this may not be practical or reasonable and neither is it necessary. As an initial matter, the primary mark and logo of the organization should be registered, almost without exception. After that, priority should be given to the trademarks that have a high value to your organization’s reputation – marks used for major service units, programs, or initiatives with a public face that you are intending to use for more than a short term or limited ad campaign. Marks that may only be in use for a short time may not need to be registered. This is something to discuss with your trademark attorney on a case by case basis. Please note, however, that all marks should be searched prior to use.
When should I register a Mark?
Once a mark has been cleared and you have decided to go forward with plans to use the mark, and the decision is made to register this mark, the registration process should begin right away. The sooner the application is filed, the less likely that someone else will start using the mark, or even file an application ahead of yours. Further, the intent-to-use provisions of the Trademark Act allow the filing of a trademark application as soon as the decision has been made to use the mark. This could be months or years prior to actual use of the mark. Then, once the registration issues, the owner is given a constructive first use date of the filing date. In this way, rights to the mark can be extended back to prior to introduction of the product into the marketplace.
Our Insight. Your Advantage. You already have an investment in each mark you choose and search; there will be considerably more investment made in developing and deploying the ad campaign. The additional costs of working with your trademark counsel to develop a rational registration plan are minimal in comparison and may save you time and money in the future.