Businesses in the USA often fail to decide whether to Register Trademarks with a state or the USPTO, for better implementation and implication. The state registration process is comparatively easy with less time consumed and less costly. The confirmation regarding the registration of the mark is also obtained at ease. Still, there are some additional benefits of federally registered trademarks and service marks.
Is it necessary to register Trademarks under federal registration?
It is not mandatory in the United States to get a mark registered federally for obtaining protectable rights. One can establish “common law” rights on a trademark based upon the use of the mark in practice even without a registration.
Common Law Rights
A business name, logo, product name or tagline that is used regularly has acquired Common Law Rights even though they are not registered. These acquired trademark rights can, however, be further strengthened by registering them federally with the USPTO office. The Common Law Trademark Rights are applicable only to the places where the trademark has been used in commerce. An unregistered trademark can be protected by applying for registration under the federal “Lanham Act”.
Under the Lanham Act, a person who has a federal registration of his trademark can stop another person from using the same (or confusingly similar) trademark throughout the U.S. This is true regardless of the fact whether the person has obtained a state registration of his mark or was the first person to use the mark in his state. According to the Supremacy Clause, a federal registration will always win over a state registration if there is any conflict between the two.
However, there are some significances of gaining a federal trademark registration over the common law trademark rights.
Significance of owning a federal trademark registration
Below mentioned is a list of benefits which are offered on federal trademark registration and which is unquestionably superior to the common law trademark rights:
- Ownership of Trademark: Once a trademark is registered federally, USPTO provides official documentation and legal ownership of the trademark to the applicant or the owner. The most valuable asset of any company is its brand or logo. A trademark registration enables the owner to gain a nationwide exclusive proprietary right of the mark. Any false acquisition regarding trademark infringement by other parties on the legitimate owner of the mark likely gets decreased.
- Notice of Ownership: A trademark once registered, is shown upon the USPTO’s online trademark database. This will appear to other persons who are looking for similar sort of mark or may apply in the Google search as well. The owner can also provide registration notice to the public once the filing is done by using the symbol ®.
These two methods can refrain other owners from using marks that can possibly be similar to the registered trademark.
- National Protection: A state registration provides coverage only within the state. Hence, for a protection that covers a larger geographical area, a federal trademark registration is the best option. And therefore, register trademarks using the federal criteria will offer better protection.
- Legal scenarios: Registration of a trademark allows the trademark owner the right to recover up to triple damages and fees of their trademark lawyer from an infringer. This is because the owner of the trademark is presumed to be the valid owner of the mark. It also gives the owner an automatic right to sue in federal court.