Unlike Patents in the United States, Trademarks are assigned on a “First to Use” basis wherein any party can claim for trademark rights as long as they have the proof of using the same in a particular geographic location. In other words, we can say that to get a trademark right it’s not mandatory to file it federally and the rights can be asserted without even notifying the federal agency about the same.
These rights are generally provided under the “Common Law” Provisions. Federal registration is, therefore, not a prerequisite for obtaining trademark rights in the United States. Common Law Trademark Search is thus the method to search these trademarks which are not registered federally or are not there in the office records. Some of the important resources that trademark search specialists use to do common law searches are financial sources, national yellow pages, top newspapers, business names and records, and top internet search engine results.
However, this article is not about common law trademarks rather the consequences of not filing a federal trademark registration. But, since it was important to understand “Common Law” before we understand the consequences of not filing a federal trademark registration we described the Common Law.
Below are some of the consequences of not filing a federal trademark registration:
You will not get Nationwide Protection: If you want to get a nationwide protection of your mark going for federal trademark registration is the best option. An unregistered trademark (typically accompanied by the symbol ™) can be difficult to enforce in the entire Country. If you wish to market your product beyond the boundary of your state, federal registration is an invaluable safeguard.
You can’t enjoy the status of Incontestability: In the United States, if a trademark is registered federally, after 5 years the owner can enjoy the status of incontestability wherein the registered trademark becomes completely incontestable and infringers will therefore face a nearly insurmountable burden to overcome the incontestable status of the mark. The burden of proof will be on the infringer and they will have to prove that consumers are not confused by the two competing marks. All we can say is that the shield of federal trademark registration will come in handy should you face a trademark infringement.
You will not be entitled for Damages: Federal trademark registration is not just a shield to protect your marks but can also be a useful tool to claim compensatory damages in case someone infringes your marks. With a federal registration, you can recover three times your actual damages from the trademark infringer, as well as profits that they earned from use of your mark. All these compensatory damages can’t be achieved if your mark is not registered federally.
You will not be entitled for your attorney fees: With a federal registration, a trademark owner becomes entitled to get compensatory damages for the attorney fees that they incurred during the process of infringement. Attorney fees can’t be claimed if you have not registered your trademark federally.
All, we can say is that though a federal registration is not mandatory to obtain a trademark right still, if you wish to shield your mark from being infringed completely then federal trademark registration is the best possible option to go with.