At this point, you’re probably wondering: (1) what’s the benefit to me of registering a trademark? And (2) What am I really risking by waiting?
There are 3 key benefits to federally registering your trademark:
Notice
You effectively deter others from using conflicting marks.
Other entrepreneurs who are looking to name their business or otherwise choose a trademark are likely to search the trademark database of registered mark but not as likely to effectively search for unregistered marks. That equals a higher deterrent effect for registered marks. Think about it: would you knowingly go ahead and use a trademark that was already registered or would you decided to head in another, unique direction?
You can anticipate that the majority of entrepreneurs would try to choose another mark. We are all seeking to be unique and identifiable in our market. Knowingly choosing a mark that’s already used to provide similar goods and services precludes that. Not to mention invites conflict and legal fees.
National rights
You have exclusive rights to your mark, even if you’re not actually selling in every state in the union.
For an unregistered mark, you have to actually establish and prove a reputation (by sufficient followers, marketing and sales) in the whole country to gain national trademark rights. Registration does that work for you.
Presumptive ownership
You do not have to prove your rights.
Let’s take the example of an unregistered mark owner and a registered mark owner with conflicting marks. Mary, the registered mark owner, is presumed by the law to be the rightful owner of the trademark nationally. Jane, the unregistered mark owner, must go to the expense and trouble of proving sufficient use in each identifiable market in the country to overcome the rights of the registered mark owner.
Sounds like a hassle, doesn’t it? It is. Establishing rights to an unregistered mark requires what is called “legally sufficient market penetration.” It is that combination of followers, marketing, and sales sufficient to establish a reputation in a given geographic area. Where, when they hear or see your trademark, do people think of you? That geographic area might be Atlanta; it might be Georgia; it might be Northern Georgia and parts of southern Tennessee and North Carolina. It’s not bound to state lines. You can see how it is difficult, even with social media and email marketing, for an entrepreneur to establish national market penetration. You can also see that it’s difficult to know with any certainty how far your rights to an unregistered mark extend.
So what’s at risk, really, if you wait to federally register your trademark?
Let’s cut to the chase here. Can you really lose the use of your business’s name or logo?
The answer is Yes. Yes, you can. I’ve watched it happen. I’ve had to tell clients that they didn’t have the rights to a mark that they thought they did. It’s not fun nor pretty. And it causes a lot of stress and a lot of anger. Not to mention distraction from the business of your business.
Take a moment and ask yourself: Are you willing to lose the use of your business’s name or logo? What would that feel like? What would it cost you?
Make no mistake: Registering your mark gives you a distinct advantage. If you find out that you’re not the first to use your mark, you have a leg to stand on—you’ve got presumptive, national rights. If you are the first to use your mark, you’ve secured national rights and precluded a second user from claiming she didn’t know about your mark.
Yes, you have trademark rights at common law from the time you use the mark, HOWEVER . . .
If you do not register, you risk that another business, using a confusingly similar mark, will register and gain national rights, limiting your ability to expand your business. Why? If you do not register, you will be limited to using your mark only where you’re actually using it when someone else registers.
Can you see that I’m really advocating that you register? I’ve seen too many panicked clients cope with trademark infringement of an unregistered mark to want you to have to go through it too.
In the next post, I’ll answer your question: How much does it cost to register a trademark? And talk some more about the value of registering to the health of your business and your sanity.
© 2012 Rebecca Prien, Esq.