Why Every Brand of Value Should Have a Federal Trademark Registration
At the time of writing this article, the United States Patent and Trademark Office (“USPTO”) has issued more than 7.8 million federal trademark registrations. While the USPTO has been granting federal registrations for trademarks since 1870, more than half of all federal trademark registrations have been granted in just the past 20 years. No doubt about it, brand owners are increasingly aware of the value and benefits that having a federal trademark registration provides.
A federal trademark registration gives the registrant (the trademark owner) rights in all 50 states and U.S. territories, even if the registrant is not selling goods or services in all 50 states at the time they apply. While a few decades ago it may not have been as significant for a brand owner to have trademark rights in a mark in say, the state of California, if they only sold goods in the Northeastern U.S., today’s marketplace has undoubtedly become so online that it is now common for businesses to sell or advertise online seeking customers from all over the U.S., whether through websites or social media. Having a federal registration gives businesses comfort in knowing that they can use the same brand for their goods or services across the entire U.S.
Sometimes clients will ask about whether their common law (unregistered) trademark rights are sufficient. It is true that federal registrations are not required by law. And, even absent a registration a trademark user can obtain enforceable common law rights in a mark just by using the mark in public in connection with the sale of their goods and/or services. However, relying on common law rights alone can be very risky, particularly if a dispute arises over use of the mark.
When a federal registration is obtained for a particular trademark, prior users of the same mark may be essentially “grandfathered in” in terms of their use of the mark. That is, depending on the circumstances, a prior user of the mark may continue using the mark in the same geographic area, and in connection with the same goods and/or services that they were using the mark with at the time the registration is granted. However, federal registration by another will prevent such prior user from using the mark in new geographic areas. Depending on the circumstances (e.g., the scope of the goods and services subject to the federal registration) such prior users may also be precluded from using the mark on different types of goods and services. Because of this, a business that is first to use a mark but fails to obtain a federal registration themselves may find their use of the mark to be restricted. They may have to pursue a different brand for any expansive business activities. This is not an ideal scenario for many businesses. Restrictions on expansion of a brand can also look bad to a potential buyer of a business who desires to grow the brand.
Another increasingly important reason to obtain a federal registration (and no doubt one factor in the recent increase of federal registrations) is that registration gives a registrant greater ability to enforce brand rights online. Seller platforms such as Amazon permit sellers to enroll federally-registered brands in platform-specific registries, making it easier to enforce rights against infringers selling competing goods on the platforms. Many online platforms, including social media platforms, have set processes in place to police trademark infringement, but having a federal registration is often key to getting their assistance. Even when enforcing rights outside of online platforms, such as through cease-and-desist letters, or even litigation, having a federal registration to cite makes the enforcement far easier.
These are just a few reasons why having a federal trademark registration is recommended for any business that is serious about building and enforcing its brand. If you are interested in filing for a federal registration to protect your own brand, please contact our firm.
