Many people wonder what the real benefits are to getting their trademark registered with the USPTO, instead of just relying on the common law unfair competition laws and the Lanham Act. So, here are nine legal and practical reasons that actually make sense.
1. Trademark Registration Can Make Trademark Disputes Easier to Resolve.
If there’s ever a legal conflict with your trademark, you will have to first determine that (1) you own (2) a protectable trademark. Do you own a protectable trademark? Are you sure?
If you go through the process of successfully registering your mark with the USPTO, this helps to establish those two elements of the issue and places the burden on the defendant to prove that you don’t own the trademark in issue.
Unfortunately, many well-meaning business owners find out too late that they don’t have a protectable trademark. There’s a list of rules that describe which terms or images can and can’t be used, and rules on how the trademark is being used for it to be protectable. If your trademark doesn’t fit all the criteria, you might find out you don’t have a protectable trademark amid a legal dispute.
2. If Statutory Damages Apply, You’ll Likely End Up with More Money.
The registration of a trademark affects the calculation of damages for trademark infringement. Instead of the plaintiff having to calculate their damages or how much they lost in sales, which generally takes an expensive financial expert to determine; the finger points at the defendant and the number of violations and how egregious and intentional the violations were. In the middle of a legal matter, it is preferable to have this burden on the other party and will likely yield a greater amount in damages and cost less to litigate. If in a legal dispute, would you prefer to calculate how many sales you’ve lost, or utilize the rule below?
The rule for statutory damages for use of counterfeit marks states: (1) not less than $1,000 or more than $200,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just; or (2) if the court finds that the use of the counterfeit mark was willful, not more than $2,000,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just.
3. Registration is an Asset and Adds Value to Your Business!
A registered trademark has value and can be licensed and sold with much less risk. It shows other parties that the federal government recognizes you as the official owner of the mark in conjunction with your goods and/or services, that you can sue in federal court, and it can be used as leverage in certain business negotiations.
4. Legal Disputes Are Less Likely to Happen.
A successful registration puts the world on notice that you’ve claimed your trademark, and that you’re serious about protecting your brand. When other business owners are creating and searching for marks, they will find yours registered with the USPTO, and hopefully know, to stay clear. In obtaining successful registration, it also means you’ve probably done some due diligence on whether you’re likely to be accused of infringement yourself, heeding off controversy at both ends. Additionally, in sending, or receiving a cease and desist, a registration number is strong ammunition.
5. Registration Can Help with Your World-Wide Expansion.
If you’ve gone big in another country, it may be wise to find out their trademark laws and get registered there! Having a registered trademark in the US can help establish your trademark in other countries.
6. You Can Get Help from the Feds!
Instead of doing all the monitoring for infringers yourself, the USPTO will block any similar applications that come after your successful application. Also, a trademark registration number can be filed with the US Customs and Border Protection, so they will be on lookout for counterfeit goods for you.
7. Five Years of Registration Means More Protection.
A trademark can be declared incontestable after five years from the registration date, giving the owner even more piece of mind as the brand grows. An incontestable mark is immune from challenge, unless it’s become a generic term, abandoned, or if registration was acquired under fraudulent conditions.
8. It Looks Good!
Not only does the formality raise the credibility of your business, but it comes with a fancy, shiny government seal and looks good next to your business license and other framed credentials.
9. It’s An Easy Investment.
In many ways, registration is like an insurance policy. You pay a higher price for better protection. You may not need it, but it’s there if you do, and in that case, will likely save more than the registration cost. If you’re seeking ways to invest in the future of your business, this can be an easy and relatively low-cost way to do so.
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*This article is not intended to be legal advice and does not establish an attorney-client relationship.
** This article contains an advertisement for legal services.
***I am not a financial advisor, and this is not financial advice.