What are the Advantages of a US trademark Registration Versus Common Law Trademark Rights?
There are at least five benefits of obtaining a US trademark registration over merely having common law trademark rights.
- With a federal registration, you can use circle R with every appearance of your trademark, rather than the much less recognizable TM. I know, at first glance, this seems trivial. But, keep in mind, when you use your trademark, you need the consuming public to know you’re using that term or image as a trademark. Many people don’t even know what the TM symbol is because most people don’t know anything about common law trademark rights. But, everyone knows that a circle R means your word or image or combination of words and images is registered.
- With a federal registration, you can enforce your trademark throughout the entire US, regardless of where you’re using it beyond your small town. Why? Because typically, if you are only selling products and services in a small area, your trademark rights would only extend throughout your small area (a bakery in Buffalo, New York called Maddie’s is not likely to be confused with a bakery called Maddie’s in San Diego). But, a federal registration gives you deemed usage throughout the nation.
- With a federal registration, you can register your trademark with US Customs and Border Protection to prevent infringing brands from coming into the US. In other words, when products come to US borders with counterfeit brands (infringing trademarks), customs agents can stop them at the border to keep them from spreading into the marketplace and both stealing your sales and damaging your brand.
- Having a federal trademark registration will put your mark into the trademark databases which are searched by trademark examiners during prosecution of competitive trademark applications. If your trademark is in those databases, examiners can find them and reject confusingly similar trademark applications. This is actually good for everyone. Why? Because trademark infringement litigation is extremely costly in terms of time and money. With this in mind, when a company is launching a new product, they want to select a non-infringing name. The best way to do this is by doing a trademark clearance search. If your trademark is registered with the United States Patent and Trademark Office, your trademark clearance search will probably find it, which would drive you to select another name. If your trademark clearance search doesn’t find it, it’s likely that the trademark examiner’s search will find it. And, hopefully all this will occur before litigation is inevitable.
- Having a federal trademark registration as opposed to merely having common law trademark rights grants you the right to file a trademark infringement lawsuit in federal court and to obtain monetary remedies, including infringer’s profits, damages, costs, and, in some cases, triple damages and attorneys’ fees.