.png)
I am often asked by business owners why they should expend precious resources to obtain registration of their trademarks.
Federal registration of a trademark provides the owner exclusive rights to use the mark in connection with specific goods or services. Although a business may have common law rights to a trademark through its use in commerce, federal registration of the trademark offers several significant advantages:
1. Nationwide Protection
Common law rights are generally limited to the geographic area where the mark is actually in use. If a business only has common law rights, another business might legally use the same or a confusingly similar mark in a different geographic region.
Federal registration extends protection nationwide, even if the business only operates in one area, preventing others from using the same or a similar mark anywhere in the U.S.
2. Public Notice and Deterrence
Federal registration provides public notice of the trademark and its owner. The publicly accessible registration in the USPTO database acts as a deterrent to other businesses considering using a similar mark, as it signals the mark is already protected across the country.
Because common law marks are not listed in a searchable federal database, registered trademarks can be easily found by others conducting a trademark search, helping to avoid conflicts.
3. Legal Presumptions
A federally registered trademark grants the owner several legal presumptions, including:
Ownership of the mark.
Exclusive rights to use the mark in connection with the registered goods or services throughout the entire U.S.
With common law rights, a business would have to prove ownership and the geographic extent of its rights in court, which can be a lengthy and costly process.
4. Enhanced Legal Protection
Federal registration allows the trademark owner to bring an infringement lawsuit in federal court, which is often more favorable than state courts for intellectual property disputes.
Registered trademark owners can recover statutory damages and attorney fees in some cases, which are not available under common law rights.
5. Protection Against Importation of Counterfeit Goods
Registered trademarks can be recorded with the U.S. Customs and Border Protection (CBP) to block the importation of counterfeit goods that infringe on the trademark.
This is a key benefit that is not available to owners of common law trademarks.
6. Use of the ® Symbol
Only owners of federally registered trademarks can use the ® symbol, which signals the mark is legally protected. Common law marks can only use the ™ symbol, which has less legal significance.
7. Foreign Trademark Protection
A U.S. federal trademark registration can be the basis for filing for trademark protection in other countries, under treaties like the Madrid Protocol.
Without federal registration, a business would face more challenges and expenses when seeking international protection for their mark.
8. Stronger Position in Disputes
In disputes, federally registered trademarks have a stronger position in litigation, including a presumption of validity, ownership, and exclusive rights. In contrast, common law trademarks must provide evidence to prove these elements from the start, which can be more difficult and costly.
For all of these reasons, it puts a business owner at a tremendous advantage when they devote some resources to register their trademarks. Consult Wei Wei Jeang (wjeang@fultonjeang.com) if you have any questions regarding trademarks.
Wei Wei Jeang is recognized by her peers in the 31ˢᵗ edition of The Best Lawyers in America® for exceptional work in Patent Law and Trademark Law for 2025.
Comments