You can establish rights in a trademark based solely upon the sale of goods bearing that mark to the public.
To the extent that the public has been exposed to your mark and has come to associate the mark with you and your goods, the courts will allow you to bring a trademark infringement action against a competitor who later adopts a mark which is likely to cause public confusion about the origin of the goods being offered for sale. Since 1946, however, trademark owners have also had the option of registering their trademarks with the United States Patent and Trademark Office (USPTO).
While trademark owners are permitted to file trademark applications themselves, many choose to hire an attorney to guide them through the registration process. Further, the USPTO charges a filing fee to submit a trademark application and then charges maintenance fees to keep any resulting trademark registrations alive. If the law provides for protection without registration, why would anyone choose to incur the additional costs of registration? A federal registration includes a number of benefits that, for many trademark owners, are worth the expense. Those benefits include:
- A legal presumption that the registrant owns the mark and has the right to use that mark nationwide in connection with the goods listed in the registration, to the exclusion of all others. Without a federal registration, trademark rights are limited to the geographic location where a mark has been used. For instance, use of a mark on goods in Ohio would generally not prevent someone else from adopting that same mark and using it on the same goods in California. A federal registration protects an expanding business that has a regional presence but is not selling goods in all 50 states. Further, if there is a dispute about who established rights to a mark first, the law presumes that the registered owner has superior rights and the accused infringer has the burden of proving that it used the mark first and should not be held liable for trademark infringement. (Even if the accused infringer makes such a showing, under certain circumstances, its rights to a mark can be limited by a later user’s successful registration of the mark.)
- Constructive notice to the public of the registrant’s claim to the mark. Someone who begins using a mark before a competitor files a federal application may continue to use that mark under certain circumstances. However, someone who adopts a mark after a competitor has already registered the same (or a similar) mark cannot establish that they adopted the mark in good faith without knowledge of the federal registration. The USPTO maintains a searchable database and would be trademark owners are charged with knowing what marks have been claimed by others—and with avoiding adopting marks which are confusingly similar to previously registered marks.
- The ability to bring an action concerning the mark in federal court. Many trademark owners prefer to litigate infringement actions in the federal courts, which may have a greater familiarity with trademark law. A federal registration allows a trademark infringement action to be brought in federal court, even where federal jurisdiction would otherwise be lacking.
- The ability to prevent the importation of infringing foreign goods. A federal registration can be filed with the United States Customs Service, which will then attempt to impound any infringing goods to stop their distribution and sale in the United States.
- The ability to obtain a registration in foreign countries. The United States has entered into agreements with many foreign countries which allow a registration in one country to be used to obtain a registration in another country. This can be useful for trademark owners who distribute their goods internationally and want to avoid trademark infringement in those international markets.