Clients often ask: “Should I register my trademark?” And, as required by law, I have to respond: “Well, it depends.” (Okay, so I am not actually required by law to respond this way. But I feel like attorneys — including me — respond this way so often that our clients might think this is the case.)
The obvious follow up question is: “So… What does it depend on?” (Or, for you grammar nerds out there: “So… On what does it depend?”)
The short answer is: Well, it depends. (Just kidding.)
In most cases, the answer is: Yes! You should obtain federal trademark registration.
However, I also recognize that some people, small businesses, and nonprofits cannot or do not want to spend the time and money required to obtain federal trademark registration, which can be costly ($225-$275/class plus attorney fees if you are not the DIY-type) and time-consuming (months or possibly years). Still, I generally advise clients that federal trademark registration is the best way to protect your valuable intellectual property. But before delving into how and why federal trademark registration is valuable, I want to give you some background to provide a little context.
Generally, there are three types of trademark protection: (1) common law, (2) state registration, and (3) federal registration. These three sources offer increasingly stronger protections. Thus, if you want the strongest protection for your trademark, you should register for both state and federal trademark protection. But it is worth noting that even if you do not register for any trademark protections, you still have common law trademark rights.
Common Law Trademark Rights
The term “common law” just means that your rights in your trademark were established and developed through use rather than registration, and are not governed by statute. Common law rights are earned only as a result of actual and continuous use of your trademark in commerce.
On the positive side, you are not entirely without protections even if you do not register your trademark. This means that you may be able to protect against others using your trademark in certain circumstances.
However, on the negative side, common law protections are very limited. For example, common law rights are typically limited to the geographic area in which your trademark is used. Thus, if you only use your trademark in Portland, then your common law trademark rights are likely limited to the Portland metro area. As a result, you would not be able to stop someone from using your trademark in San Francisco.
Additionally, although you may be able to stop others from using your trademark in your geographical area, common law rights do not give you the ability to recover profits, statutory damages, attorney fees, treble (i.e. triple) damages for willful infringement of your trademark, and do not allow you to establish nationwide priority or use the little “R in a circle” designation next to your Mark to give others notice. (Instead, you have to use the superscript “TM”, which simply does not command the same amount of respect.)
Perhaps the main concern with common law trademark rights is that your rights are much less secure. Common law trademark rights within a geographic area are based on priority of use. In other words, even if you have been using your trademark in Portland for the past five years, if it turns out that there is another “prior user” of your mark who has been using the same trademark for five years plus one day, you may lose your right to use the trademark. Also, even if you are the “prior user” of the trademark, another party can come along and register the same trademark on the federal level, which would give the other party the right to use your trademark in all areas of the country other than your limited geographical area (and any geographical area where you would reasonably be expected to expand). (Although a federal trademark does not become “incontestable” until five years after registration.)
In other words, common law rights are better than nothing, but in reality offer very little protection. So, if your trademark is worth protecting and you can afford the costs associated with registration, it is worth protecting with more than common law trademark rights.
State Trademark Registration
The next step up from common law rights is state registration. In Oregon, the process for registering for state-level trademark protection is very easy.
Oregon law allows you to protect any word, name, symbol, or device (or combinations thereof) which are used to identify your goods or services and distinguish your goods and services from the goods and services of others. But you can only register your trademark with the Oregon Secretary of State if you are actually using the Mark in Oregon. There are no “intent to use” registrations.
The registration process is fairly simple. Basically, you just file this form with the Secretary of State and pay the processing fee. Your registration is good for five years and may be renewed for consecutive terms of five years.
A valid registration of your trademark in Oregon creates the presumption that you own and have the exclusive right to use the Mark in Oregon in connection with your goods and services. But even though this state-level registration provides additional protections and benefits above and beyond those provided under common law, you are still afforded significantly less protection than if you register for federal trademark protection. So why would you bother with state-level registration? For one, it is a much cheaper ($50/class) and quicker (weeks) process. So it can be a relatively easy way of gaining some “local” protections in Oregon for your trademark.
However, even if you go this route, you should also seek federal trademark registration if you do business (even over the internet) anywhere outside of Oregon.
Federal Trademark Registration
Federal trademark registration is far and away the best way to protect your trademark. However, as you might expect, the process is neither cheap nor easy.
As with Oregon law, Federal law allows you to protect any word, name, symbol, or device (or any combination thereof) used in connection with your goods or services. But only certain trademarks can be registered. The US Patent and Trademark Office (“USPTO”) reviews each application and will reject any trademark that is (a) confusingly similar to any preexisting trademark, (b) merely descriptive or misdescriptive of the goods or source/quality of the goods, or (c) immoral, deceptive, or scandalous, among other reasons. To avoid this fate, you want a trademark that falls into one of the following categories (in order of strength): (a) fanciful (made up word – e.g. Adidas), (b) arbitrary (regular word used in unrelated context – e.g. Apple computers), (c) suggestive (a word that suggests certain attributes – e.g. Jaguar cars), or (d) descriptive (a word that describes the goods but has secondary meaning – e.g. International Business Machines or “IBM” for computers).
Therefore, before filing a trademark application, you will first need to determine whether your trademark falls into one of the registerable categories. Then, you will need conduct a “clearance search” to determine whether your trademark is “available” (i.e. whether anyone else is using the same or a similar trademark). This can include searching the records of the USPTO, state trademark databases, domain name registries, and other sources. Based on these results, you can determine whether your trademark is available to be registered. This process can be lengthy and costly depending on the nature of your trademark and type of goods or services.
Once you file your application, you will likely have to go back and forth with the USPTO a few times, responding to “office actions” that set forth specific legal requirements that you must meet before your applicable can be approved for publication. Again, this can be a lengthy and costly process.
Once published, other parties have 30 days to file their opposition if they think they may be damaged by your registration. However, it is worth noting that even if nobody files any opposition to your registration, your trademark is not “incontestable” until five years after registration. During this time, others may seek to cancel your trademark through cancellation proceedings with the USPTO. Typically, such proceedings are based on another’s claim that your trademark is “confusingly similar” to their trademark.
Eventually, though, if your trademark is registerable and available, and your application is approved by the USPTO, you will have your federally registered trademark! Along with this registration comes a number of benefits, including:
- Notice to all others nationwide who may want to use your trademark.
- The right to use the “R in a circle” symbol in connection with your trademark.
- The right to sue for infringement in federal court.
- The presumption of exclusive ownership and use.
- The ability to recover profits, statutory damages, and attorney fees in an infringement action.
- Incontestable status five years after registration.
Your federal trademark registration is good for 10 years, with successive 10-year renewal terms. However, it is important to remember that between the 5th and 6th year after registration, you must file an affidavit to maintain your registration, or your trademark will be canceled.
So… Should I register my Trademark?
As noted above, my answer is generally “Yes!”.
As long as you can afford to obtain federal trademark registration, you should do so to protect your valuable trademark. In reality, the value of your trademark far exceeds the cost of registration, and if you do not protect your trademark, you risk losing some or all of your rights in the trademark to another party, and have a significantly limited ability to pursue damages in the event of trademark infringement.
Nate, this is a great article…very informative.